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Meet the New Discretionary Denial Factor on the PTAB Block: Settled Expectations

USPTO Acting Director Coke Morgan Stewart recently issued a decision discretionarily denying five petitions for inter partes review (IPR) filed by iRhythm against patents owned by Welch Allyn based on a factor that had not...more

A New Era for the PTAB: Discretion Returns, Layoffs Loom, and Early Challenges Encouraged

The USPTO has launched a sweeping recalibration of its post-grant proceedings at the PTAB, signaling a decisive pivot back toward discretionary denials of patent challenges. With the rescission of prior procedural guidance, a...more

Federal Circuit Clarifies Secret Prior Art May Be Used in IPR Challenges

On January 14, 2025, the Federal Circuit in Lynk Labs Inc. v. Samsung Electronics Co. Ltd. clarified that inter partes review challenges may be “based upon published patent applications, and such published patent applications...more

USPTO Implements PTAB Director Review Rules

The US Patent and Trademark Office (USPTO) implemented 37 CFR § 42.75 on October 31, 2024, establishing a formal framework for Director Review of Patent Trial and Appeal Board (PTAB) proceedings. During her tenure, Director...more

Practical Applications of Recent USPTO Patent Eligibility Examples

The United States Patent and Trademark Office (USPTO) has released new guidance on patent subject matter eligibility (the Guidance), with a particular focus on artificial intelligence (AI) and related technologies. As noted...more

Impact on IP Law in the Wake of US Supreme Court’s Decision

The US Supreme Court’s June 28, 2024 decision in Loper Bright Enterprises v. Raimondo and Relentless Inc. v. Department of Commerce overruled the forty-year-old Chevron U.S.A. Inc. v. Natural Resources Defense Council Inc....more

USPTO Critical Guidance on 35 Usc § 112(F): Implications for Patent Applicants and Practitioners

The US Patent and Trademark Office (USPTO) this week issued a memorandum related to guidelines for examining patent claims with means-plus-function and step-plus-function limitations under 35 USC § 112(f). The memorandum...more

USPTO Sets Forth Criteria for AI-Assisted Inventorship

The US Patent and Trademark Office (USPTO) has released comprehensive guidance on inventorship for artificial intelligence (AI)-assisted inventions. This guidance, instigated by the executive order Safe, Secure, and...more

USPTO Revises Interim Director Review Process, Gives Guidance on Ex Parte Appeals, and Forms New Review Panels

The US Patent and Trademark Office (USPTO) recently issued an update to its procedures for interim Director Review (DR) of decisions by the Patent Trial and Appeal Board (PTAB), evidencing USPTO Director Kathi Vidal’s efforts...more

USPTO Unleashes Wave of PTAB Rule Proposals

The US Patent and Trademark Office (USPTO) published an Advance Notice of Proposed Rulemaking (ANPRM) on April 20 seeking comments on proposed changes to America Invents Act trial proceedings before the Patent Trial and...more

USPTO Director Vidal: Decision on Treatment of Multiple Dependent Claims Is Precedential

US Patent and Trademark Office (USPTO) Director Katherine K. Vidal recently designated as precedential a decision by the Patent Trial and Appeal Board (PTAB or Board) in IPR2020-01234, which granted rehearing and modified the...more

USPTO Director Designates Precedential Decision on Conclusory Expert Declarations

Director of the US Patent and Trademark Office (USPTO) Kathi Vidal recently designated as precedential a decision by the Patent Trial and Appeal Board (PTAB) rejecting the petitioner’s invalidity challenge, since it was based...more

Federal Circuit: Only Minimal Evidence Needed to Satisfy Corroboration Requirement in Priority Contests

The US Court of Appeals for the Federal Circuit recently held that the Patent Trial and Appeal Board correctly considered evidence of multiple witnesses to be sufficient in corroborating actual reduction to practice when...more

PTAB Digest 2021/2022: The Latest Trends and Developments in Post-Grant Proceedings

The PTAB Digest 2021/2022 provides an overview of PTAB statistics, trends, and updates that impact strategies and business decisions for patent owners and petitioners alike. Significant developments included the...more

PTAB Considers Interim Fintiv Guidance in Refusing to Exercise Discretion to Deny Institution

The Patent Trial and Appeal Board recently granted the institution of an inter partes review in Samsung Electronics Co. v. Staton Techiya, LLC, despite the existence of a parallel proceeding in the US District Court for the...more

USPTO Director Clarifies PTAB’s Application of Fintiv to Limit Discretionary Denials

The USPTO has issued interim procedures curbing the PTAB’s discretionary denials over post-grant proceedings associated with parallel ITC proceedings or district court litigation. ...more

Federal Circuit: PTO Director Decisions Vacating Ex Parte Reexamination for Estoppel Subject to Judicial Review

In Alarm.com Inc. v. Hirshfeld, the US Court of Appeals for the Federal Circuit ruled that decisions by the US Patent and Trademark Office Director vacating ex parte reexamination based on estoppel may be subject to judicial...more

USPTO Introduces Pilot Program to Defer Response to Subject Matter Eligibility Rejections

The US Patent and Trademark Office is implementing a pilot program to allow participating applicants to defer responding to subject matter eligibility rejections until the earlier of a final disposition of the application, or...more

USPTO Clarifies and Expands Small Entity Status Exceptions

The US Patent and Trademark Office (USPTO) announced on December 4 a rule change to clarify and expand exceptions to small entity status, which primarily affects the fees that the USPTO charges patent applicants. ...more

USPTO Codifies Burden of Persuasion Rules for AIA Amendments at the PTAB

It has been argued that the Patent Trial and Appeal Board (PTAB or Board) cannot engage in rulemaking through decisions made by its administrative patent judges (APJs), even if those decisions are made precedential, as APJs...more

Federal Circuit: PTAB’s Determination of Real Party in Interest Is Barred from Review

In a recent opinion in ESIP Series 2, LLC v. Puzhen Life USA, LLC, the US Court of Appeals for the Federal Circuit determined that 35 USC 314(d), which bars appellate review of US Patent and Trademark Office decisions to...more

CARES Act: Key Takeaways for the Technology Industry

President Donald Trump signed the $2.2 trillion Coronavirus Aid, Relief, and Economic Security Act (CARES Act or the Act) into law on March 27. The CARES Act aims to offer economic relief to companies and their employees due...more

2019 PTAB Digest: The Latest Trends and Developments in Post-Grant Proceedings

As of 2019, post-grant proceedings have been in use for seven years. Designed as an alternative to district court litigation, post-grant proceedings have offered litigants a faster and more cost-effective forum for resolving...more

Precedential PTAB Decision Holds Inter Partes Review Challengers Can Join Own Petitions

A panel of the US Patent Trial and Appeal Board has identified “limited circumstances” in which a patent challenger can join its own inter partes review petition to add new issues. Parties seeking to join their own petitions...more

USPTO Announces Guidance for Subject Matter Eligibility and Computer-Implemented Functional Claim Limitations

The US Patent and Trademark Office (USPTO) on January 4 announced the “2019 Revised Patent Subject Matter Eligibility Guidance” and “Computer-Implemented Functional Claim Limitations Guidance” for examiners and administrative...more

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