On July 31, the United States Patent and Trademark Office issued a memorandum (“Memo”) announcing that the Office will renew enforcement of 37 C.F.R. § 42.104(b)(4) (“Rule 104(b)(4)”) in inter partes review (IPR) proceedings....more
In Ingenico v. IOENGINE, No. 2023-1367 (Fed. Cir. May 7, 2025), the Federal Circuit resolved a long-standing split among District Courts in favor of petitioners regarding inter partes review (IPR) estoppel under 35 U.S.C. §...more
On Friday, May 16, the U.S. Patent and Trademark Office (USPTO) issued discretionary denial decisions in the first four matters considered under the USPTO’s new interim workload management process....more
The United States Patent and Trademark Office (USPTO) has recently made several significant changes that are reshaping discretionary denials at the Patent Trial and Appeal Board (PTAB). ...more
Fish & Richardson’s 2024 Post-Grant Report takes a deep dive into the cases, trends, and statistics that shaped Patent Trial and Appeal Board (PTAB) practice throughout the year and how they might affect practitioners going...more
3/7/2025
/ Appeals ,
Final Rules ,
Inter Partes Review (IPR) Proceeding ,
Patent Fees ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Post-Grant Review ,
Prior Art ,
Rulemaking Process ,
USPTO
On February 28, 2025, the United States Patent and Trademark Office announced that it has rescinded the June 21, 2022, memorandum about discretionary denials in Patent Trial and Appeal Board (PTAB) post-grant proceedings with...more
3/3/2025
/ America Invents Act ,
Apple ,
Final Written Decisions ,
Intellectual Property Litigation ,
Inter Partes Review (IPR) Proceeding ,
International Trade Commission (ITC) ,
New Guidance ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Post-Grant Review ,
USPTO
United States Patent and Trademark Office (USPTO) Director Kathi Vidal had a busy end to her summer, issuing six decisions as part of the Director Review process between July 10 and August 22. In the six decisions, the...more
10/16/2024
/ Administrative Procedure ,
Administrative Review ,
America Invents Act ,
Claim Construction ,
Final Rules ,
Inter Partes Review (IPR) Proceeding ,
Notice Requirements ,
Patent Trial and Appeal Board ,
Patents ,
Post-Grant Review ,
Precedential Opinion ,
Prior Art ,
Sanctions ,
Time-Barred Claims ,
USPTO
Director Review at the Patent Trial and Appeal Board (PTAB) remains a hot topic in patent law. The Director first established an interim process for Director Review in the wake of the Supreme Court’s 2021 decision in United...more
7/31/2024
/ Administrative Procedure ,
Advisory Committee ,
Inter Partes Review (IPR) Proceeding ,
NPRM ,
Patent Infringement ,
Patent Litigation ,
Patents ,
Post-Grant Review ,
SCOTUS ,
Standard of Review ,
Sua Sponte ,
United States v Arthrex Inc ,
USPTO
One year ago, the United States Patent and Trademark Office (USPTO) issued an Advance Notice of Proposed Rulemaking (ANPRM) that set forth several ideas related to America Invents Act (AIA) proceedings before the Patent Trial...more
4/23/2024
/ Administrative Procedure ,
Advanced Notice of Proposed Rulemaking (ANPRM) ,
America Invents Act ,
Inter Partes Review (IPR) Proceeding ,
NPRM ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Post-Grant Review ,
Prior Art ,
USPTO
The Director of the United States Patent and Trademark Office (USPTO) established the interim process for Director Review of Patent Trial and Appeal Board (PTAB) decisions in the wake of the Supreme Court’s 2021 decision in...more
The United States Patent and Trademark Office (USPTO) published a Notice of Proposed Rulemaking (NPRM) today proposing to update its rules governing motions to amend before the Patent Trial and Appeal Board (PTAB). ...more
3/5/2024
/ America Invents Act ,
Comment Period ,
Inter Partes Review (IPR) Proceeding ,
Motion to Amend ,
NPRM ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Post-Grant Review ,
Proposed Rules ,
USPTO ,
USPTO Pilot Program