On April 25, 2025, the USPTO issued additional information in response to frequently asked questions (FAQs) about the “Interim Processes for PTAB Workload Management” memorandum issued on March 26, 2025. As discussed in our...more
On March 26, 2025, the USPTO issued the attached memo titled “Interim Processes for PTAB Workload Management,” which significantly alters the pre-institution briefing procedure for IPRs and PGRs.
Under the Interim Process,...more
On Friday, the USPTO rescinded its June 21, 2022, memorandum entitled “Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation” (“Fintiv memo”). The USPTO notice makes...more
3/3/2025
/ America Invents Act ,
Appeals ,
Intellectual Property Litigation ,
Intellectual Property Protection ,
Inter Partes Review (IPR) Proceeding ,
International Trade Commission (ITC) ,
Parallel Proceedings ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
USPTO
The final year of Director Vidal’s tenure as the Director of the U.S. Patent and Trademark Office was a busy year for rulemaking at the Office. Since late 2023, five Notices of Proposed Rulemaking (NPRMs) directly related to...more
2/18/2025
/ America Invents Act ,
Appeals ,
Director of the USPTO ,
Final Rules ,
Final Written Decisions ,
Inter Partes Review (IPR) Proceeding ,
Motion to Amend ,
NPRM ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
USPTO
The Patent Trial and Appeal Board (PTAB) continues to play a pivotal role in shaping the intellectual property landscape. In 2024, several developments affecting PTAB practice emerged, from new rulemaking at the USPTO to key...more
2/4/2025
/ §315(e) ,
Administrative Procedure Act ,
America Invents Act ,
Appeals ,
Corporate Counsel ,
Director of the USPTO ,
Final Rules ,
Intellectual Property Litigation ,
Intellectual Property Protection ,
Inter Partes Review (IPR) Proceeding ,
Obviousness ,
Patent Litigation ,
Patent Ownership ,
Patent Trial and Appeal Board ,
Patents ,
Prior Art ,
Rulemaking Process ,
Section 102 ,
Statistical Analysis ,
Statutory Interpretation ,
Technology ,
USPTO
On April 19, 2024, the USPTO published a long-awaited Notice of Proposed Rulemaking (NPRM) that followed its April 2023 Advance Notice of Proposed Rulemaking (ANPRM). The proposed rules package, Patent Trial and Appeal Board...more
4/24/2024
/ Advanced Notice of Proposed Rulemaking (ANPRM) ,
America Invents Act ,
Claim Construction ,
Comment Period ,
Derivation Proceeding ,
Intellectual Property Litigation ,
Intellectual Property Protection ,
Inter Partes Review (IPR) Proceeding ,
Notice of Proposed Rulemaking (NOPR) ,
Patent Litigation ,
Patent Ownership ,
Patent Trial and Appeal Board ,
Patents ,
Post-Grant Review ,
Proposed Rules ,
USPTO
Please see Charts below for more information....more
A review of 2023 reveals it was an active and impactful year in shaping the policy and practice before the Patent Trial and Appeal Board (PTAB or Board) at the U.S. Patent and Trademark Office (USPTO). In fact, all three...more
2/12/2024
/ America Invents Act ,
Director of the USPTO ,
Estoppel ,
Ex Partes Reexamination ,
Final Written Decisions ,
Intellectual Property Litigation ,
Intellectual Property Protection ,
Inter Partes Review (IPR) Proceeding ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Post-Grant Review ,
Standard Essential Patents ,
USPTO
Yita LLC petitioned for IPR of two patents owned by MacNeil IP LLC. This summary focuses on the proceedings on MacNeil’s patent relating to vehicle floor trays that “closely conform[]” to certain walls of the vehicle foot...more
This recurring feature highlights any new PTAB precedential and/or informative decisions, any new substantive Director review decisions, and any new substantive decisions issued by the Precedential Opinion Panel (POP). The...more
5/15/2023
/ Director of the USPTO ,
Expert Testimony ,
Final Written Decisions ,
Intellectual Property Litigation ,
Intellectual Property Protection ,
Inter Partes Review (IPR) Proceeding ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Popular ,
Precedential Opinion ,
PTAB Precedential Opinion Panel (POP) ,
USPTO
Google petitioned for IPR of two patents owned by IPA. Each of the asserted grounds relied on the Martin reference. Martin lists as authors the two inventors of the challenged patents and a third person, Dr. Moran. During...more
2/21/2023
/ Burden of Persuasion ,
Burden of Production ,
Evidence ,
Final Written Decisions ,
Google ,
Intellectual Property Protection ,
Inter Partes Review (IPR) Proceeding ,
Inventors ,
Joint Inventors ,
Patent Applications ,
Patent Litigation ,
Patent Prosecution ,
Patent Trial and Appeal Board ,
Patents ,
Preponderance of the Evidence ,
Prior Art ,
Remand ,
Testimony ,
Vacated
NVIDIA petitioned for IPR of two patents owned by Polaris. The Board found the challenged claims unpatentable. Polaris appealed. While on appeal, the final written decisions in those IPRs were vacated and the proceedings were...more
2/21/2023
/ Appointments Clause ,
Arbitrary and Capricious ,
Arthrex Inc v Smith & Nephew Inc ,
Final Written Decisions ,
Intellectual Property Protection ,
Inter Partes Review (IPR) Proceeding ,
Motion to Terminate ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Remand ,
Vacated
Speakers will offer updates, case summaries, and analysis of the significant 2022 PTAB guidance, actions, and rulings. Topics include: the Director’s 2022 Fintiv guidance, PTAB discretionary denial, the use of applicant...more
2/20/2023
/ Continuing Legal Education ,
Estoppel ,
Final Written Decisions ,
Intellectual Property Litigation ,
Intellectual Property Protection ,
Inter Partes Review (IPR) Proceeding ,
Patent Applications ,
Patent Infringement ,
Patent Invalidity ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Post-Grant Review ,
Prior Art ,
Webinars
As part of the recovery from the global COVID-19 pandemic, the U.S. Court of Appeals for the Federal Circuit took steps to return to normal operations. It began requiring live oral arguments in August 2022 and, by November,...more
2/8/2023
/ § 314(d) ,
§ 315(b) ,
35 U.S.C. §315(e)(1) ,
Abuse of Discretion ,
Administrative Patent Judges ,
Administrative Procedure Act ,
America Invents Act ,
Anticipation ,
Apple ,
Appointments Clause ,
Arbitrary and Capricious ,
Arthrex Inc v Smith & Nephew Inc ,
Article III ,
Artificial Intelligence ,
Broadcom ,
Burden of Persuasion ,
Burden of Production ,
Confidentiality Agreements ,
Consent Order ,
Constitutional Challenges ,
Covenant Not to Sue ,
Director of the USPTO ,
Doctrine of Equivalents ,
Estoppel ,
Evidence ,
Ex Partes Reexamination ,
Expert Testimony ,
Failure To Disclose ,
Federal Vacancies Reform Act ,
Final Written Decisions ,
Forum Selection ,
Google ,
Indefiniteness ,
Intel ,
Intellectual Property Litigation ,
Intellectual Property Protection ,
Inter Partes Review (IPR) Proceeding ,
International Trade Commission (ITC) ,
Inventions ,
Inventors ,
Joint Inventors ,
Jurisdiction ,
Lack of Jurisdiction ,
Likelihood of Confusion ,
Motion to Amend ,
Motion to Terminate ,
Obviousness ,
Obviousness-Type Double Patenting (ODP) ,
Parallel Proceedings ,
Patent Act ,
Patent Applications ,
Patent Infringement ,
Patent Invalidity ,
Patent Litigation ,
Patent Prosecution ,
Patent Trial and Appeal Board ,
Patent-Eligible Subject Matter ,
Patents ,
Post-Grant Review ,
Preliminary Injunctions ,
Preponderance of the Evidence ,
Prior Art ,
Qualcomm ,
Real Party in Interest ,
Remand ,
Section 101 ,
Section 112 ,
Separation of Powers ,
Standing ,
Statutory Authority ,
Sua Sponte ,
Substantial Evidence ,
Testimony ,
Time-Barred Claims ,
Trademark Application ,
Trademark Infringement ,
Trademark Litigation ,
Trademark Registration ,
Trademark Trial and Appeal Board ,
Trademarks ,
USPTO ,
Vacated ,
Written Descriptions