News & Analysis as of July 12, 2025

Inter Partes Review (IPR) Proceeding

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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 -

The PREVAIL Act Is Back. Will It Prevail This Time?

Fish & Richardson on 6/9/2025

On May 1, 2025, Senators Chris Coons (D-DE), Thom Tillis (R-NC), Dick Durbin (D-IL), and Mazie Hirono (D-HI) reintroduced the Promoting and Respecting Economically Vital American Innovation Leadership (PREVAIL) Act. The...more

New Guidance Regarding Fintiv Discretionary Denial at the PTAB

Holland & Knight LLP on 3/31/2025

Two recent memoranda from the Patent Trial and Appeal Board (PTAB or Board) have sought to clarify the factors by which boards will evaluate discretionary denial under Fintiv. This guidance follows the U.S. Patent and...more

PTAB Issues Updated Fintiv Guidance

Jones Day on 3/26/2025

After rescinding the June 2022 guidance regarding Fintiv, the PTAB issued updates to how they will consider discretionary denial issues under Section 314(a) on Monday. ...more

USPTO Withdraws June 2022 Guidance on Fintiv Denials

Rothwell, Figg, Ernst & Manbeck, P.C. on 3/5/2025

On Friday, February 28, 2025, the United States Patent and Trademark Office (USPTO) announced the withdrawal of the June 2022 memorandum titled “Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with...more

USPTO Rescinds Memo Addressing PTAB Discretionary Denial Procedures

Sterne, Kessler, Goldstein & Fox P.L.L.C. on 3/3/2025

On Friday, the USPTO rescinded its June 21, 2022, memorandum entitled “Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation” (“Fintiv memo”). The USPTO notice makes...more

USPTO Rescinds 2022 Guidance on Discretionary Denials

Fish & Richardson on 3/3/2025

On February 28, 2025, the United States Patent and Trademark Office announced that it has rescinded the June 21, 2022, memorandum about discretionary denials in Patent Trial and Appeal Board (PTAB) post-grant proceedings with...more

Navigating the PREVAIL Act: Key Impacts on Litigants as It Advances in the Senate

Pillsbury Winthrop Shaw Pittman LLP on 1/17/2025

The PREVAIL Act is now subject to debate before the full Senate. The Act will require petitioners to certify standing, two new categories of which were recently added via a manager’s amendment....more

Status Quo Has Few Defenders at PREVAIL Act Senate Subcommittee Hearing

McDermott Will & Emery on 11/16/2023

On November 8, 2023, the US Senate Judiciary Subcommittee on Intellectual Property heard testimony from four witnesses on the proposed Promoting and Respecting Economically Vital American Innovation Leadership (PREVAIL) Act....more

The Many Flavors of Inter Partes Review Estoppel: A Review and Update

Haug Partners LLP on 9/11/2023

I. Introduction - The Leahy-Smith America Invents Act (“AIA”) was years in the making. From the first patent reform bill introduced by Representative Lamar Smith in June 20052 until the final House and Senate debates in...more

Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2022 Decisions: Data and Trends: AIA PTAB Appeals to the Federal...

Sterne, Kessler, Goldstein & Fox P.L.L.C. on 2/9/2023

Note: Includes reinstated, cross-, and consolidated appeals. After two years of declines, new appeals from the USPTO increased modestly in FY22. Appeals from district courts increased year over year as well, bucking a...more

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

Sterne, Kessler, Goldstein & Fox P.L.L.C. on 2/8/2023

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

Interim Procedure for Discretionary Denials Established

Jones Day on 7/15/2022

On June 21, USPTO Director Kathi Vidal issued a memorandum concerning the PTAB’s practice of determining whether to institute an AIA post-grant proceeding in view of the Fintiv factors. The memorandum is in part a result of...more

PGR Estoppel Continues to be Broad and Onerous

Jones Day on 3/24/2022

An ITC Administrative Law Judge (ALJ) recently issued an initial determination holding that PGR estoppel prevented GMG Products LLC (Respondent) from raising two prior-art products in the ITC....more

2021 PTAB Year in Review: Analysis & Trends: Fintiv Continues To Take Center Stage: The Effect of Parallel Litigation at the PTAB...

Sterne, Kessler, Goldstein & Fox P.L.L.C. on 3/10/2022

In 2021, Fintiv continued to be one of the hottest and most controversial issues facing the patent bar. The USPTO Patent Trial and Appeal Board’s (PTAB) precedential Fintiv decision enumerated factors that the PTAB applies...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

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

Sterne, Kessler, Goldstein & Fox P.L.L.C. on 2/9/2022

[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

2019 PTAB Year in Review: Analysis & Trends: Petitioners Beware Discretionary Denial

Sterne, Kessler, Goldstein & Fox P.L.L.C. on 3/10/2020

In August 2018, the Patent Office foreshadowed that the Board would be expanding the use of its discretion under 35 U.S.C. §§ 314(a)/324(a) and 325(d) to deny petitions. The Office explained that “[t]here may be other reasons...more

Latest Federal Court Cases - September 2019

Schwabe, Williamson & Wyatt PC on 9/4/2019

PATENT CASE OF THE WEEK - BioDelivery Sciences Int’l, Inc. v. Aquestive Therapeutics, Inc., Appeal Nos. 2019-1643, -1644, -1645 (Fed. Cir. Aug. 29, 2019) - Our case of the week this week focuses on Section 314(d)—the...more

A Uniform Standard for Interpreting Claims

Ward and Smith, P.A. on 11/9/2018

On October 11, 2018, the United States Patent and Trademark Office ("USPTO'') issued revised rules for claim construction. The rules will take effect on November 13, 2018. The new rules mandate that the claim...more

PTAB Adopts Phillips Standard for Claim Construction in AIA Proceedings

Knobbe Martens on 11/1/2018

On October 11, 2018, the USPTO published a Final Rule in the Federal Register, adopting a new standard for interpreting claims in trial proceedings before the patent trial and appeal board (PTAB)....more

Changes to PTAB’s Claim Construction Standard - Intellectual Property News

Bradley Arant Boult Cummings LLP on 10/16/2018

On October 10, 2018, the United States Patent and Trademark Office (USPTO) announced that it will issue a final rule changing the claim construction standard for interpreting claims in inter partes review (IPR), post-grant...more

PTAB Adopts the Phillips Claim Construction Standard in AIA Proceedings

Mintz - Intellectual Property Viewpoints on 10/12/2018

Today the Patent Trial and Appeal Board announced a final rule changing the claim construction standard for interpreting claims in inter partes review (“IPR”), post-grant review (“PGR”), and covered business method patent...more

PTAB Strategies and Insights - September 2018: Best Strategies for ITC Respondents When Considering a PTAB Action

Sterne, Kessler, Goldstein & Fox P.L.L.C. on 9/26/2018

When faced with allegations of patent infringement at the International Trade Commission (ITC), a respondent must quickly evaluate whether or not to request an AIA review (hereinafter, inter partes review for convenience) at...more

Federal Circuit Upholds Trade Show Catalog As Prior Art in Nobel Biocare Servs. AG v. Instradent USA, Inc.

Mintz - Intellectual Property Viewpoints on 9/26/2018

Recently in Nobel Biocare Services AG v. Instradent USA, Inc., the Federal Circuit affirmed a decision of the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (“the Board”) in an inter partes review (“IPR”)...more

Is the International Trade Commission the Most Patent-Friendly Venue with a Complainant Success Rate Near 90%?

Foley & Lardner LLP on 4/27/2018

There are many advantages to pursuing relief for patent infringement in the International Trade Commission (ITC) compared to U.S. district court, but one that receives little attention is the success rate for complainants...more

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America Invents Act › International Trade Commission (ITC) › Inter Partes Review (IPR) Proceeding

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