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Petitioner’s Proof of Printed Publication Falls Short

On February 6, 2025, the PTAB denied IPR institution because the Petitioner failed to establish that its key prior art reference qualified as a printed publication under Section 102(b). The PTAB’s decision hinged on whether...more

PTAB Denial of Inter Partes Review under §325(d)

The Patent Trial and Appeal Board (“PTAB” or “Board”) recently denied inter partes review (IPR) of an electrocardiography monitor patent under 35 U.S.C. §325(d), finding that the same or substantially the same prior art or...more

Recap: Post-Arthrex Director Reviews State of Play

In a previous post from July 2021, we discussed the interim process for Director review in PTAB proceedings post-Arthrex. Since then, only three out of over 175 requests for Director review of a Final Written Decision have...more

Kathi Vidal Nominated for USPTO Director

On October 26, 2021, President Biden nominated Kathi Vidal – the managing partner of Winston and Strawn’s Silicon Valley office – as Director of the United States Patent and Trademark Office (USPTO).  ...more

Federal Circuit Grants Arthrex Relief Despite Waiver Arguments

On March 30, 2020, the Federal Circuit relied on Arthrex, Inc. v. Smith & Nephew, Inc., 941 F.3d 1320 (Fed. Cir. 2019) to vacate and remand several related PTAB decisions, including in proceedings where the patent owner did...more

Federal Circuit Reluctantly Applies Arthrex Decision

On January 31, 2020, the Federal Circuit vacated and remanded a Patent Trial and Appeal Board (“PTAB”) final written decision in view of Arthrex, but did so reluctantly because it disagreed with the merits and questioned the...more

SCOTUS Rejects Petition To Review Section 325(d)

On November 19, 2018, the Supreme Court of the United States (SCOTUS) rejected a petition to review the PTAB’s refusal to deny IPR institution under § 325(d), in a case where the challenged patent had survived several...more

Practical Tips from the Judges’ Panel at the PTAB Judicial Conference

On July 26, 2018, the Silicon Valley Regional Office of the United States Patent and Trademark Office (“USPTO”) hosted a Judicial Conference by the Patent Trial and Appeal Board (“PTAB”). During the conference, a panel of...more

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