Recent developments at the USPTO suggest a significant shift in favor of the PTAB exercising discretionary denial and uncertainty on behalf of parties to PTAB proceedings. ...more
4/4/2025
/ Administrative Agencies ,
Administrative Procedure Act ,
Intellectual Property Protection ,
Inter Partes Review (IPR) Proceeding ,
Inventions ,
Judicial Authority ,
Parallel Proceedings ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
USPTO
The PTAB recently declined to exercise its discretion to deny IPR, instituting review in BMW of North America, LLC v. NorthStar Systems LLC, IPR2023-01017, Paper 12 (Dec. 8, 2023). There, the PTAB held that (1) a Sotera...more
On November 6, 2023, the PTAB issued an decision instituting inter partes review of U.S. Patent No. 10,681,009 B2 (“the ’009 patent”) in Keysight Technologies, Inc. v. Centripetal Networks, Inc., IPR2022-01421, Paper 16 (PTAB...more
On November 16, 2022, the United States Patent and Trademark Office (“PTO”) vacated a reexamination proceeding because the patent challenger relied on unpatentability grounds that reasonably could have been raised in an...more
The USPTO released a study in June 2022 that analyzed the prevalence of Fintiv denials occurring between January 1, 2019 and December 31, 2021. The Study focused on data illustrating how often patent owners raised parallel...more
After an initial denial, the PTAB recently granted Unified Patents’ motions for entry of protective order and for seal in Unified Patents, LLC v. Electronics and Telecommunications Research Institute, IPR2020-01048, Paper 33...more
The Patent Trial and Appeal Board (“PTAB”) of the United States Patent and Trademark Office (“USPTO”) issued a final rule regarding the allocation of the burden of persuasion for the patentability of substitute claims on...more
The USPTO has revised its standard operating procedure (SOP) governing the assignment of judges to panels in Patent Trial and Appeal Board (PTAB) cases. The SOP, available here, provides guidance to Board administrative...more
On April 24, 2018, the U.S. Supreme Court issued its decision in SAS Institute Inc. v. Iancu, holding that a decision to institute inter partes review under 35 U.S.C. § 314 may not institute on less all claims challenged in...more