News & Analysis as of

Statutory Deadlines Parallel Proceedings

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

PTAB Strategies and Insights - July 2021: What Court Stipulations Persuade the PTAB in Petitioners’ and Patent Owners’ Favor on...

Petitioners and Patent Owners alike have started filing stipulations in district court and at the International Trade Commission to leverage the Fintiv factors in their favor on the issue of discretionary denial at the Patent...more

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

PTAB Strategies and Insights - July 2021

[co-author: Jay Bober, Summer Associate] 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...more

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

PTAB Strategies and Insights - June 2020: Patent Owner's Delay in District Court Causes the PTAB to Reverse Course and Grant a...

The Board made a rare reversal of an institution decision – turning a denial of institution into trial in Sand Revolution v . Continental Intermodal Group-Trucking, IPR2019-01393, Paper 24 (PTAB June 16, 2020). The denial had...more

Mintz - Intellectual Property Viewpoints

Shifting “Sands”: New Facts on the Ground Justify Institution of a Previously-Denied IPR

In a rare reversal, the Patent Trial and Appeal Board (“PTAB”) reassessed the Fintiv factors in a decision on a petition for rehearing of a previous decision denying institution of an inter partes review (“IPR”). The PTAB had...more

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