News & Analysis as of August 4, 2025

America Invents Act › Corporate Counsel

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The Leahy-Smith America Invents Act is a United States federal statute enacted in 2011 aimed at simplifying the U.S. patent system and allowing inventions to be brough to market sooner. The AIA makes significant changes to the patent system, including changing from a first-to-invent scheme to a first-to-file scheme, eliminating interference proceedings and developing post-grant opposition. less -

2024 PTAB Year in Review: Analysis & Trends

Sterne, Kessler, Goldstein & Fox P.L.L.C. on 2/4/2025

The Patent Trial and Appeal Board (PTAB) continues to play a pivotal role in shaping the intellectual property landscape. In 2024, several developments affecting PTAB practice emerged, from new rulemaking at the USPTO to key...more

PTAB AIA FY2024 Roundup: Key Insights and Statistics

Jones Day on 1/17/2025

The U.S. Patent and Trademark Office (USPTO) recently released its Fiscal Year 2024 roundup for the Patent Trial and Appeal Board (PTAB) America Invents Act (AIA) proceedings. This comprehensive report provides valuable...more

Is the Federal Circuit Breathing Life Back Into False Patent Marking Claims?

Pillsbury Winthrop Shaw Pittman LLP on 10/10/2024

The Federal Circuit determined that if a company misleads consumers about the nature of a product by making false patent marking claims, it can be held liable under the Lanham Act. False marking claims under the Lanham Act...more

USPTO Director’s Decision Highlights Consequences of Evidence Suppression

DLA Piper on 9/23/2024

In a rare exercise of authority through a sua sponte director review, US Patent and Trademark Office (USPTO) Director Kathi Vidal affirmed the Patent Trial and Appeal Board (PTAB)’s decision to sanction patent owner Longhorn...more

Chevron Overruled, but PTAB Likely to Emerge Unscathed

Morrison & Foerster LLP on 7/10/2024

Administrative agencies long enjoyed deference from the courts under Chevron U.S.A., Inc. v. Natural Resources Defense Council, Inc., 467 U.S. 837 (1984). Chevron required courts to give leeway to agencies interpreting...more

Breaking Down the USPTO’s Not-So-Obvious Obviousness Guidelines

Morgan Lewis on 3/27/2024

The US Patent and Trademark Office (USPTO) recently updated its guidance for patent examiners and applicants in determining obviousness under 35 USC § 103, based on the US Supreme Court’s ruling in KSR Int’l Co. v. Teleflex...more

2023 PTAB Year in Review: Analysis & Trends: Federal Circuit Cases Exploring a Year of Rules, Rulemaking, and Rule Enforcement at...

Sterne, Kessler, Goldstein & Fox P.L.L.C. on 2/22/2024

A trio of cases this past year illustrate a trend of increasing importance in the power of Patent-Office rulemaking and enforcement, and the influence it has on patent owners and challengers alike....more

2023 PTAB Year in Review: Analysis & Trends

Sterne, Kessler, Goldstein & Fox P.L.L.C. on 2/12/2024

This Year in Review synthesizes key events and decisions from 2023 into a digestible guide that we hope will serve as a helpful reference for those who practice before, or adjacent to, the PTAB. As in the past, many of our...more

PTAB Makes Significant Changes to Director Review Process

Sheppard Mullin Richter & Hampton LLP on 7/26/2023

After considering comments from various stakeholders for nearly a year, on July 24, 2023, the USPTO issued the revised interim Director Review Process. Among other changes, the revised process now permits parties to request...more

USPTO Unleashes Wave of PTAB Rule Proposals

Morgan Lewis on 4/25/2023

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

USPTO Proposed Rulemaking Could Reshape Post-Grant Practice Under the AIA

Morrison & Foerster LLP on 4/24/2023

On April 21, the U.S. Patent and Trademark Office (USPTO) published an Advanced Notice of Proposed Rulemaking (ANPRM), based on a Request for Comments (RFC) published in 2020. The ANPRM sets forth a series of proposed rule...more

Director Vidal Hands Down Precedential Decision on Issue of First Impression Addressing Patentability of Multiple Dependent Claims

Akin Gump Strauss Hauer & Feld LLP on 4/11/2023

Patent Office Director Katherine Vidal recently issued a precedential decision addressing an issue of first impression before the Board: whether the patentability of multiple dependent claims must be determined separately for...more

Clarification or Raising the Bar? PTO Director Issues New Guidance for Discretionary PTAB Denials

McDermott Will & Schulte on 6/30/2022

On June 21, 2022, US Patent & Trademark Office (PTO) Director Katherine K. Vidal issued a memorandum addressing interim procedures for discretionary denials in America Invents Act (AIA)-post grant proceedings at the Patent...more

2021 PTAB Year in Review: Analysis & Trends

Sterne, Kessler, Goldstein & Fox P.L.L.C. on 3/7/2022

[co-author: Jamie Dohopolski] Love it or hate it, ignore the USPTO Patent Trial and Appeal Board (PTAB) at your peril. The introduction of the PTAB as part of the America Invents Act over ten years ago has forever changed...more

Recent Federal Circuit Decisions Find Many Internet Documents Are “Printed Publications”

Fitch, Even, Tabin & Flannery LLP on 2/28/2022

The Federal Circuit has recently provided substantial guidance on whether printed publications include documents publicly available via the internet. This article reviews four such cases that illustrate the expansive view...more

2022 IP Outlook Report: The Developments Shaping Patent Law

McDermott Will & Schulte on 2/18/2022

KEY TAKEAWAYS AND OUTLOOK FOR 2022 - Tracking with this era’s continuation and uncertainty trends―global supply chain disruption, innovation outpacing legislation, the unstoppable internet of [all the] things (IoT)―2022 is...more

PTAB’s Structure and Funding Pass Due Process Muster

Fitch, Even, Tabin & Flannery LLP on 11/3/2021

On October 13, in Mobility Workx v. Unified Patents, LLC, the Federal Circuit rejected a series of due process challenges to the structure of the Patent Trial and Appeal Board (PTAB), leaving the PTAB to continue with...more

PTAB Snapshot – A Quarterly Report on Trends and New Precedent at the PTAB – Q3 The Arthrex Decision, Its Impact on Prior IPR...

Orrick, Herrington & Sutcliffe LLP on 8/4/2021

In this second edition of Orrick’s quarterly series on the PTAB, we summarize the Arthrex decision, walk through the PTO’s post-Arthrex interim procedure for reviewing PTAB decisions, and discuss potential post-Arthrex...more

Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2020 Decisions

Sterne, Kessler, Goldstein & Fox P.L.L.C. on 2/3/2021

[co-author: Kathleen Wills] Last year, the global COVID-19 pandemic created unprecedented challenges for American courts. By making several changes, however, the U.S. Court of Appeals for the Federal Circuit was able to...more

2020 PTAB Year in Review

Wilson Sonsini Goodrich & Rosati on 1/26/2021

The firm's post-grant practice is pleased to present its 2020 PTAB Year in Review. The publication begins with a review of 2020 petition filings at the Patent Trial and Appeal Board (PTAB) and takes a closer look at the...more

Supreme Court: Parties Cannot Appeal PTAB Decision To Institute Inter Partes Review of Allegedly Time-Barred Claims

Skadden, Arps, Slate, Meagher & Flom LLP on 4/21/2020

On April 20, 2020, the U.S. Supreme Court issued a 7-2 decision in Thryv, Inc. v. Click-To-Call Technologies, LP, ruling Section 314(d) of the America Invents Act (AIA) precludes the appeal of a decision by the Patent Trial...more

Federal Circuit Appeals From The PTAB: Summaries of Key 2019 Decisions

Sterne, Kessler, Goldstein & Fox P.L.L.C. on 2/6/2020

In 2019, the U.S. Court of Appeals for the Federal Circuit docketed just over 650 appeals from the U.S. Patent and Trademark Office (USPTO). That is the highest number since the Court started to hear post-American Invents Act...more

Key 2019 Decisions Impacting Patent Law

Tarter Krinsky & Drogin LLP on 1/27/2020

In 2019, both the Supreme Court and the Court of Appeals for the Federal Circuit issued decisions that will significantly affect patent law practice. Supreme Court Cases- Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA...more

Following Up after Oral Argument in Thryv, Inc. fka Dex Media Inc. v. Click-to-Call Technologies, LP

Faegre Drinker Biddle & Reath LLP on 12/12/2019

On June 24, 2019, the Supreme Court granted the petition for certiorari in Thryv, Inc. fka Dex Media Inc. v. Click-to-Call Technologies, LP on the question of whether 35 U.S.C. § 314(d) permits appeal of the Patent Trial and...more

Can Late IPR Petitions Be Appealed? Analyzing the Supreme Court's Oral Argument in Thryv, Inc. v. Click-to-Call Technologies

White & Case LLP on 12/11/2019

White & Case Technology Newsflash - On December 9, 2019, the Supreme Court heard oral arguments in Thryv, Inc. v. Click-to-Call Technologies, Case No. 18-916. The case involves the proper application of Section 315(b) of the...more

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America Invents Act › Corporate Counsel

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