News & Analysis as of

America Invents Act Post-Grant Review 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

Fish & Richardson on

On February 28, 2025, the United States Patent and Trademark Office announced that it has rescinded the June 21, 2022, memorandum about discretionary denials in Patent Trial and Appeal Board (PTAB) post-grant proceedings with...more

Jones Day

PTAB AIA FY2024 Roundup: Key Insights and Statistics

Jones Day on

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

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

Goodwin

Issue 43: PTAB Trial Tracker

Goodwin on

Petitioner Allowed to Proceed in “Understudy Role” - In American Honda Motor Co., Inc. v. Neo Wireless, LLC, IPR2023-0791 (P.T.A.B. March 30, 2023), American Honda Motor Co., Inc. (“Honda”) filed a “copycat” Petition...more

Proskauer - Minding Your Business

Deadline Dexterity: PTAB Has Authority to Issue Decisions After Statutory Deadline

Recently, in Purdue Pharma L.P. v. Collegium Pharmaceutical, Inc., the Federal Circuit held for the first time that the Patent Trial and Appeal Board (“the Board”) has the authority to issue a Final Written Decision even...more

McDermott Will & Emery

Delay Is Okay: Final Written Decisions Can Be Issued After Statutory Deadline

McDermott Will & Emery on

In a matter of first impression, the US Court of Appeals for the Federal Circuit concluded that the Patent Trial & Appeal Board has the authority to issue a final written decision (FWD) in a post-grant review (PGR) proceeding...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: Biologics at the PTAB: Statistics and Insights into Notable Biologics Decisions

In June 2021, the US Patent and Trademark Office (USPTO) published an update to its study of America Invents Act (AIA) trials involving challenges to Orange Book-listed and biologic patents from September 16, 2012, through...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

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

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

[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

Goodwin

Issue Twenty-Nine: PTAB Trial Tracker

Goodwin on

The availability of post-grant proceedings at the Patent Trial and Appeal Board (PTAB) has changed the face of patent litigation. This monthly digest is designed to keep you up-to-date by highlighting interesting PTAB,...more

Wilson Sonsini Goodrich & Rosati

2019 PTAB Year in Review

Wilson Sonsini Goodrich & Rosati is pleased to present our 2019 PTAB Year in Review. We begin the 2019 PTAB Year in Review with a review of 2019 petition filings at the Patent Trial and Appeal Board (PTAB) and then take a...more

Foley & Lardner LLP

PTAB - 2019 Year in Review

Foley & Lardner LLP on

To wrap up 2019 and usher in 2020 for practitioners who handle Patent Trial and Appeal Board (PTAB) matters, Foley partners Jeanne Gills, Steve Maebius, and George Quillin discussed 2019’s major developments in a webinar on...more

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

2019 Report: Federal Circuit Appeals from the PTAB - Summaries of Key 2018 Decisions: SAS Institute v. Iancu, 138 S.CT. 1348...

SAS sought an inter partes review (IPR) of ComplementSoft’s patent. In its petition, SAS alleged that all of the patent’s claims were unpatentable. The PTAB determined to institute trial on some, but not all, of the...more

McDonnell Boehnen Hulbert & Berghoff LLP

Top Stories of 2018: #6 to #10

After reflecting upon the events of the past twelve months, Patent Docs presents its 12th annual list of top patent stories. For 2018, we identified fifteen stories that were covered on Patent Docs last year that we believe...more

Jones Day

PTAB Flushes Airplane Lavatory Patent On On-Sale Bar

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On October 23, 2018, the PTAB found unpatentable B/E Aerospace’s U.S. Design Patent No. D764,031 (“’031 patent”). C&D Zodiac, Inc. v. B/E Aerospace, Inc., PGR2017-00019, Paper 37 (PTAB Oct. 23, 2018). The ’031 patent...more

Mintz - Intellectual Property Viewpoints

Federal Circuit Puts the Brakes on PTAB Final Written Decision For Procedural APA Violation

In EmeraChem Holdings LLC v. Volkswagen Group of Am. Inc., the Federal Circuit reminded the PTAB that it must abide by the APA’s requirements of adequate notice and an opportunity to respond when conducting a post-grant...more

Herbert Smith Freehills Kramer

Potential Impact of the Supreme Court’s Decision to Review the PTAB’s Practice of Issuing Partial Final Written Decisions in...

In a case with potential wide-ranging ramifications for patent validity challenges, on May 22, 2017, the Supreme Court granted a writ of certiorari in an appeal from an inter partes review (“IPR”) decision, SAS Institute v....more

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