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Existence != Access – Public Accessibility Must be Clear

In a recent decision, the Patent Trial and Appeals Board denied institution of inter partes review after holding that Petitioner Microsoft’s key obviousness reference did not qualify as a printed publication. Microsoft Corp....more

HE HAD THE POWER – Hirshfeld Decisions Stand

A panel of the Federal Circuit has again held that Commissioner Drew Hirshfeld had the requisite authority to act on requests for Director review of PTAB decisions during which the office of Director was vacant. Fall Line...more

Confidential Manual Deemed Not A Printed Publication

In a recent decision, the Patent Trial and Appeals Board found that no claims challenged were unpatentable, after finding manuals relied upon as prior art did not qualify as “printed publications” under 35 U.S.C. §...more

Rolling The Dice – Discretionary Denial And Forum Selection Clauses

* The Federal Circuit has just issued an additional decision in this dispute today. We will cover that development further shortly. In a recent decision, the Patent Trial and Appeals Board granted institution of inter...more

PTAB News: First Arthrex Director Review Granted

In a recent decision, Commissioner Andrew Hirschfeld, who is currently performing the functions and duties of the Under Secretary of Commerce for Intellectual Property and Director of the USPTO, issued the first post-Arthrex...more

Some Conditions May Apply – Fintiv Factor 4 Analysis

In a recent decision, the Patent Trial and Appeal Board granted institution of inter partes review after accepting the Petitioner Microsoft’s stipulation to forego overlapping challenges in parallel district court proceedings...more

A Cautionary Tale: Paying IPR Filing Fees Via Wire Transfer

A June 25, 2021 decision by the PTAB has clarified that when paying the filing fee via wire transfer, the inter partes review (“IPR”) petition filing date is based upon when the funds are made available to the USPTO.  ...more

Use It Or Lose It – Second Appeal Appointments Clause Challenge Deemed Forfeited

An April 13, 2021 decision by the Federal Circuit denied a motion to vacate and remand PTAB decisions based on the Federal Circuit’s October 2019 decision in Arthrex v. Smith & Newman, Inc., et al., 941 F.3d 1320 (Fed. Cir....more

Like Dominoes: CBM Determination Held Not Appealable

A November 17, 2020 decision by the Federal Circuit has extended the Supreme Court’s April 2020 decision in Thryv, Inc. v. Click-to-Call Technologies, LP, 140 S. Ct. 1367 (2020), which held that institution decisions...more

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