News & Analysis as of

Section 325(d) United States Patent and Trademark Office

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

2021 PTAB Year in Review: Analysis & Trends: The Resurgence and Perils of Ex Parte Reexaminations

Ex parte reexaminations have re-emerged as an increasingly important component of patent litigation and licensing negotiations. With the passage of the America Invents Act (“AIA”) and the advent of inter partes reviews...more

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

2021 PTAB Year in Review: Analysis & Trends: Discretionary Denial under § 325(d): Strategic Implications of the PTAB’s Advanced...

The USPTO Patent Trial and Appeal Board (PTAB) has increasingly used its discretionary denial authority in recent years. Although the PTAB’s discretion under 35 U.S.C. § 314(a) and Fintiv grabbed many headlines in 2021, the...more

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

2021 PTAB Year in Review: Analysis & Trends: Editors' Introduction

Love it or hate it, ignore the USPTO Patent Trial and Appeal Board (PTAB) at your peril. The introduction of the PTAB as part of the America Invents Act over ten years ago has forever changed patent litigation. In its first...more

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

2021 PTAB Year in Review: Analysis & Trends

[co-author: Jamie Dohopolski] Love it or hate it, ignore the USPTO Patent Trial and Appeal Board (PTAB) at your peril. The introduction of the PTAB as part of the America Invents Act over ten years ago has forever changed...more

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

Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2021 Decisions

[co-author: Jamie Dohopolski] Last year, the continued global COVID-19 pandemic forced American courts to largely continue the procedures set in place in 2020. The U.S. Court of Appeals for the Federal Circuit was no...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - October 2021

In re: Vivint, Inc., Appeal No. 2020-1992 (Fed. Cir. Sept. 29, 2021) - In an appeal from the United States Patent Trial and Appeal Board, the Federal Circuit addressed whether a party may challenge the validity of an...more

McDermott Will & Emery

PTAB Designates Two Opinions Precedential and One Opinion Informative, Further Clarifying the Scope of the Board’s Discretion...

Addressing the scope of the Patent Trial and Appeal Board’s (“Board”) discretion under 35 U.S.C. § 325(d) to deny institution, the Board designated three opinions as precedential or informative. Precedential Opinions: In...more

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

PTAB Strategies and Insights - August 2019. The USPTO Recently Issued Two Precedential and One Informative Decision Regarding...

The USPTO explained the significance of the cases as follows: Becton, Dickinson and Company v. B. Braun Melsungen AG, Case IPR2017-01586 (PTAB Dec. 15, 2017) (Paper 8) – (precedential as to section III.C.5, first paragraph...more

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

PTAB Strategies and Insights - August 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

Bass, Berry & Sims PLC

USPTO Issues Two Precedential Decisions Relating to the PTAB’s Discretion to Deny Institution

Bass, Berry & Sims PLC on

Following the United States Patent and Trademark Office’s (USPTO) recent wave of decisions designated precedential or informative, the USPTO added two more decisions to the list last week: Valve Corp. v. Elec. Scripting...more

Knobbe Martens

PTO Explains that Old School Proceedings (Reissue/Reexam) Must Generally Yield to New School Proceedings (AIA Trials) for Claim...

Knobbe Martens on

Recently, the PTO issued a Notice providing guidance on how the Board treats reissue and reexamination proceedings while an AIA trial on the same patent is co-pending. The guidance comes in response to public comments and...more

Jones Day

SCOTUS Rejects Petition To Review Section 325(d)

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On November 19, 2018, the Supreme Court of the United States (SCOTUS) rejected a petition to review the PTAB’s refusal to deny IPR institution under § 325(d), in a case where the challenged patent had survived several...more

Jones Day

Intervening Court Decisions May Prevent Denial of Review Under § 325(d)

Jones Day on

Under 35 U.S.C. § 325(d), the PTAB has discretion regarding whether to institute a covered business method review if the arguments presented in the petition are the same, or substantially the same, as those previously...more

Jones Day

Declarations as New Evidence to Overcome § 325(d)

Jones Day on

We have published other blog postings relating to 35 U.S.C. §325(d), including a blog posting that addresses the PTAB’s October 24, 2017 notice designating three of its decisions as informative (here). Recently, the PTAB...more

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

The Board Gives Section 325(d) Sharp Teeth—Part III —Things Are Looking Up for Patent Owners

This is the third of a three-part series discussing developments around Section 325(d). Part one appeared in our October 2017 newsletter and part two appeared in our November 2017 newsletter. As we have noted in each of...more

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