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USPTO’s Notice of Proposed Rulemaking for Discretionary Denial Briefing, Section 325(d), Instituting Parallel and Serial...

On April 19, 2024, the United States Patent and Trademark Office (USPTO) issued a notice of proposed rulemaking (NPRM) that proposes rules regarding the exercise of discretion to determine whether to institute an Inter Partes...more

USPTO Issue Notice of Proposed Rulemaking for Rules Governing Director Review of Patent Trial and Appeal Board Decisions

On April 16, 2024, the United States Patent and Trademark Office (USPTO) issued a notice of proposed rulemaking (NPRM) regarding Director Review of Patent Trial and Appeal Board (PTAB) decisions in America Invents Act (AIA)...more

Ranking Parallel Petitions Before the PTAB: A Survey

On November 10, 2018, Comcast Cable Communications, LLC (Comcast) filed six inter partes review (“IPR”) petitions, each challenging claims 1–28 of Rovi Guides, Inc.’s (Rovi’s) U.S. Patent No. 7,827,585. In an unprecedented...more

PTAB's 1st Preliminary Reply And Surreply Under New Rules

The most recent Patent Trial and Appeals Board rule changes, effective May 2, 2016, allow petitioners to seek leave to file a reply to a patent owner preliminary response upon a showing of good cause. Amendments to the Rules...more

IPR Motions to Amend: Rays of Hope Despite Gloomy Statistics

The America Invents Act permits patent owners to move to amend claims of a patent subject to inter partes review. However, attempts to amend claims have been largely unsuccessful to date, and some of the hurdles patent owners...more

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