News & Analysis as of

America Invents Act Intellectual Property Litigation Final Written Decisions

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... more +
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 -
Fish & Richardson

USPTO Rescinds 2022 Guidance on Discretionary Denials

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On February 28, 2025, the United States Patent and Trademark Office announced that it has rescinded the June 21, 2022, memorandum about discretionary denials in Patent Trial and Appeal Board (PTAB) post-grant proceedings with...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

2023 PTAB Year in Review: Analysis & Trends: 2023 PTAB Case Highlights

Precedential Decisions - Penumbra, Inc. v. RapidPulse, Inc., IPR2021-01466, Paper 34 (March 10, 2023) (designated: November 15, 2023) (regarding prior art status under AIA § 102) The Director designated as precedential...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

2023 PTAB Year in Review: Analysis & Trends: The Staying Power of Fintiv: The Effect of Parallel Litigation at the PTAB in 2023

In 2023, Fintiv—the precedential Order issued in 2020 that established a six-factor framework that the Patent Trial and Appeal Board (PTAB) applies when evaluating whether to exercise its discretion to institute an America...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

2023 PTAB Year in Review: Editors’ Introduction

A review of 2023 reveals it was an active and impactful year in shaping the policy and practice before the Patent Trial and Appeal Board (PTAB or Board) at the U.S. Patent and Trademark Office (USPTO). In fact, all three...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

2023 Design Patents Year in Review: Analysis & Trends: PTAB: Design Patents for GUI Interface Cancelled in AIA Proceedings

All three of the challenges that the Patent Trial and Appeal Board (PTAB) instituted in 2022 resulted in a final written decision canceling the challenged patent. Two of the three final written decisions rendered in 2023 are...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

USPTO Confirms Different Frameworks for Pre-AIA and Post-AIA Prior-Art Determinations

On November 15, 2023, Director of the United States Patent and Trademark Office (USPTO) Kathi Vidal designated as precedential the Patent Trial and Appeal Board’s (PTAB) final written decision in Penumbra, Inc. v. RapidPulse,...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

2022 Design Patents Year in Review: Analysis and Trends: PTAB: Odds of Escaping Challenges Remain Steady for Design Patents,...

In 2022, the Patent Trial and Appeal Board (PTAB) did not issue any final written decisions involving design patents. However, it did issue three decisions granting review of challenged design patents and three decisions...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2022 Decisions

As part of the recovery from the global COVID-19 pandemic, the U.S. Court of Appeals for the Federal Circuit took steps to return to normal operations. It began requiring live oral arguments in August 2022 and, by November,...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

2021 PTAB Year in Review: Analysis & Trends

[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

Sterne, Kessler, Goldstein & Fox P.L.L.C.

Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2021 Decisions

[co-author: Jamie Dohopolski] Last year, the continued global COVID-19 pandemic forced American courts to largely continue the procedures set in place in 2020. The U.S. Court of Appeals for the Federal Circuit was no...more

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