News & Analysis as of

Patents Administrative Procedure Inter Partes Review (IPR) Proceeding

Jones Day

PTAB Announces a Bifurcated Process for Consideration of IPR and PGR Petitions

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A new interim process for the acting director to exercise discretion as to whether to institute an inter partes review ("IPR") or a post-grant review ("PGR") was announced on March 26, 2025, in which discretionary...more

Latham & Watkins LLP

USPTO Implements Interim Procedures Bifurcating Decisions to Institute AIA Trials

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On March 26, 2025, Acting Director of the United States Patent and Trademark Office (USPTO) Coke Morgan Stewart issued a memorandum (the Workload Memorandum) to all Administrative Patent Judges (APJs) of the Patent Trial and...more

Fish & Richardson

EPRx 101: Getting to Know Ex Parte Reexamination

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Ex parte reexamination (EPRx) is a powerful tool that allows any party — including the patent owner — to request that the United States Patent and Trademark Office (USPTO) reassess the validity of an issued patent based on...more

BCLP

Patent Office Withdraws Previous Discretionary Denial Guidance for Post-Grant Proceedings

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On Friday afternoon, February 28, 2025, the United States Patent and Trademark Office (USPTO) issued a brief “bulletin” rescinding a memorandum issued by the former Director Kathy Vidal (“Vidal Memo”) providing guidance on...more

Fish & Richardson

Recapping a Busy Summer for Director Review

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United States Patent and Trademark Office (USPTO) Director Kathi Vidal had a busy end to her summer, issuing six decisions as part of the Director Review process between July 10 and August 22. In the six decisions, the...more

Fish & Richardson

How the Timing of Director Review May Affect Co-Pending Litigation

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Director Review at the Patent Trial and Appeal Board (PTAB) remains a hot topic in patent law. The Director first established an interim process for Director Review in the wake of the Supreme Court’s 2021 decision in United...more

Fish & Richardson

USPTO Issues Proposed Rules on Discretionary Denial in PTAB Proceedings

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One year ago, the United States Patent and Trademark Office (USPTO) issued an Advance Notice of Proposed Rulemaking (ANPRM) that set forth several ideas related to America Invents Act (AIA) proceedings before the Patent Trial...more

WilmerHale

PTAB/USPTO Update - August 2021

WilmerHale on

USPTO Leadership - ..Drew Hirshfeld is still performing the functions and duties of Director. The Biden Administration has not made an announcement as to who will be nominated to become the next Director....more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

PTAB Strategies and Insights - July 2020: Motions to Amend Post Hunting Titan

The Patent Trial and Appeal Board’s (PTAB) obstacles to successful motions to amend have been daunting. As published previously, filing motions to amend have historically been an exercise in futility due to their low chance...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

PTAB Strategies and Insights - July 2020

The PTAB Strategies and Insights newsletter provides timely updates and insights into how best to handle proceedings at the USPTO. It is designed to increase return on investment for all stakeholders looking at the entire...more

Jones Day

Federal Circuit Requests Additional Arthrex Appointments Clause Briefing

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Following up on a November 4th oral argument (accessible here) that focused on the Arthrex Appointments Clause issue, the Federal Circuit has requested additional briefing from Polaris, Kingston, and the U.S. regarding the...more

Jones Day

Judge Dyk Says Arthrex Remedy is Unnecessary

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Judge Dyk and Judge Newman disagree with the Arthrex remedy requiring rehearing. In Arthrex, the Federal Circuit panel of Judges Moore, Reyna, and Chen held the appointment of Administrative Patent Judges (APJs) was an...more

Foley & Lardner LLP

PTAB Precedential 35 U.S.C. 315(b) Decisions Show Service in Dismissed Infringement Cases Can Still Bar IPR Institution

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The PTAB recently designated two decisions interpreting 35 U.S.C. § 315(b) as precedential. Each decision applies the Federal Circuit’s literalist interpretation of § 315(b) from Click-to-Call (CTC) to, in one...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

PTAB Strategies and Insights - June 2019

The PTAB Strategies and Insights newsletter provides timely updates and insights into how best to handle proceedings at the USPTO. It is designed to increase return on investment for all stakeholders looking at the entire...more

Miller Canfield

Patent Trial and Appeal Board Gives Green Light to Same-Party and Issue Joinder

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The Patent Trial and Appeal Board ("PTAB") has issued a precedential opinion that gives a green light to same-party and issue joinder. This practice will provide discretion to PTAB judges to allow a petitioner to add new...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

PTAB Precedent Opinion Panel Clarifies Standard for Joinder of Parties and Issues

On March 13, 2018, the U.S. Patent and Trademark Office Patent Trial and Appeal Board (PTAB)’s Precedential Opinion Panel (POP), consisting of Director Andrei Iancu, Commissioner of Patents Drew Hirshfeld, and newly appointed...more

Jones Day

Amended Claims In IPRs Must Clear Higher Hurdle Than Original Claims

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An IPR of issued patent claims is statutorily limited to prior art challenges based on patents and printed publications under § 102 (novelty) or § 103 (obviousness). The PTAB may not institute an IPR of existing patent claims...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

PTAB Strategies and Insights - January 2019: Unreviewed Filing Date Notice Dooms Petition

Petitioners beware. Your Notice of Filing date needs to be reviewed immediately – and not just the notice email, because the email does not alert petitioner to defects in filing....more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

PTAB Strategies and Insights - January 2019

The PTAB Strategies and Insights newsletter provides timely updates and insights into how best to handle proceedings at the USPTO. It is designed to increase return on investment for all stakeholders looking at the entire...more

Jones Day

Precedential Opinion Panel to Review Same-Party Joinder

Jones Day on

In September, the Patent Office revised Standing Operating Procedure 2 to create a new review path for designating opinions precedential or informational. Under the new rule, the review is performed by the Precedential...more

Knobbe Martens

Patent Law Update for Medical Device Companies 2018 (Presentation)

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Knobbe Martens Partners Paul Conover, Irfan Lateef, and Curtis Huffmire presented "Patent Law Update for Medical Device Companies 2018" at the MedTech Innovation Summit in San Francisco, CA on November 28, 2018. This session...more

Latham & Watkins LLP

PTAB Update: New Motion to Amend Procedures Proposed

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The new procedures could be in place before the end of 2018 with far-reaching effects for both patent owners and petitioners. Key Points: ..The new procedures allow a patent owner to file a motion to amend six weeks...more

Jones Day

Indefiniteness Again Leads To Unsuccessful IPR Challenge

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The PTAB may institute IPR proceedings only on the basis of certain prior art that is potentially invalidating under § 102 (novelty) or § 103 (obviousness). The PTAB may not institute IPR on any other unpatentability grounds,...more

Jones Day

PTAB: Institution Decision Addressing Only One Claim Acceptable Post-SAS

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Last week, the PTAB denied a rehearing request by a patent owner who asserted that the PTAB’s institution decision failed to comply with PTAB rules, specifically 37 C.F.R. § 42.108, because the institution decision only...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

Global Patent Prosecution Newsletter - September 2018: Third Party Submissions in the U.S.: What You Need to Know

The America Invents Act provides an expanded process for a third party to submit prior art to the examiner concerning any U.S. patent application. The new process is aimed to encourage the public to submit relevant art as a...more

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