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Meet the New Discretionary Denial Factor on the PTAB Block: Settled Expectations

USPTO Acting Director Coke Morgan Stewart recently issued a decision discretionarily denying five petitions for inter partes review (IPR) filed by iRhythm against patents owned by Welch Allyn based on a factor that had not...more

Federal Circuit Clarifies Scope and Timing of Collateral Estoppel for Claims Under IPR

In a recent opinion, the Federal Circuit added several new wrinkles to amendment practice in inter partes review proceedings. The court affirmed the Patent Trial and Appeal Board’s determination that most of the original...more

USPTO Unleashes Wave of PTAB Rule Proposals

The US Patent and Trademark Office (USPTO) published an Advance Notice of Proposed Rulemaking (ANPRM) on April 20 seeking comments on proposed changes to America Invents Act trial proceedings before the Patent Trial and...more

Federal Circuit Clarifies IPR Estoppel Burden

A recent Federal Circuit opinion clarified that patent owners carry the burden of proving that inter partes review (IPR) estoppel applies to invalidity grounds not included in their IPR petitions. The Federal Circuit also...more

USPTO Director Designates Precedential Decision on Conclusory Expert Declarations

Director of the US Patent and Trademark Office (USPTO) Kathi Vidal recently designated as precedential a decision by the Patent Trial and Appeal Board (PTAB) rejecting the petitioner’s invalidity challenge, since it was based...more

PTAB Considers Interim Fintiv Guidance in Refusing to Exercise Discretion to Deny Institution

The Patent Trial and Appeal Board recently granted the institution of an inter partes review in Samsung Electronics Co. v. Staton Techiya, LLC, despite the existence of a parallel proceeding in the US District Court for the...more

PTAB Emphasizes Expert Availability and Clarifies Fintiv Inquiry for Prior District Court Cases

The US Patent Trial and Appeal Board on December 23, 2021, instituted an inter partes review even though an unrelated party had already unsuccessfully challenged the validity of the patent in district court. In the decision...more

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