News & Analysis as of July 15, 2025

Intellectual Property Protection

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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 Return of ‘Fintiv’? Discretionary Denials of AIA Post-Grant Petitions Are Back on the Menu

BakerHostetler on 3/4/2025

In one of the first acts by the United States Patent and Trademark Office (USPTO) in the new administration, the USPTO – via an email sent February 28 – rescinded former USPTO Director Kathi Vidal’s 2022 memorandum titled...more

PTAB Rescinds Discretionary Denial Memorandum

Jones Day on 3/3/2025

On Friday, the USPTO rescinded its June 21, 2022, guidance memorandum entitled “Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation.” That memorandum discussed...more

Life Sciences Industry Update: 2024 Mid-Year Report

Ballard Spahr LLP on 8/20/2024

ARTIFICIAL INTELLIGENCE IN LIFE SCIENCES - Life sciences companies are forming AI-driven strategic collaborations with tech giants, creating synergy that promises to revolutionize the industry. Companies like NVIDIA,...more

USPTO Proposes Expanding Opportunities for Non-Registered Practitioners

Jones Day on 5/30/2024

The PTO has issued a Notice of Proposed Rulemaking regarding who may represent parties in PTAB post-grant trials. The proposal is part of the USPTO’s wider initiative to expand access to practice before the Office. ...more

IP Hot Topic: USPTO Publishes Long-awaited Notice of Proposed Rulemaking with Updates to PTAB Practice and Procedure

Sterne, Kessler, Goldstein & Fox P.L.L.C. on 4/24/2024

On April 19, 2024, the USPTO published a long-awaited Notice of Proposed Rulemaking (NPRM) that followed its April 2023 Advance Notice of Proposed Rulemaking (ANPRM). The proposed rules package, Patent Trial and Appeal Board...more

2023 PTAB Year in Review: Editors’ Introduction

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

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

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

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

USPTO Director Review — Patents: Post-Grant Podcast

Troutman Pepper Locke on 10/25/2023

Please join Troutman Pepper’s Intellectual Property and Health Sciences practice groups for our podcast series focused on strategies, trends, and other happenings in post-grant proceedings at the U.S. Patent Office (USPTO). ...more

A Distillation of the USPTO’s Notice of Proposed Rulemaking: “Changes under Consideration to Discretionary Institution Practices,...

Kilpatrick on 4/28/2023

On April 20, 2023, the USPTO announced Advance Notice of Proposed Rulemaking for potential PTAB reforms. The goal of the Notice was to seek public input regarding proposed changes to discretionary institution practices,...more

A Petitioner’s Guide: Navigating Uncertainty on PGR Eligibility

Jones Day on 3/1/2023

Samsung Electronics Co. (“Samsung”) recently faced the issue of determining whether U.S. Patent No. 11,163,823 (“the ‘823 patent”) is a pre- or post-AIA patent. Hedging its bets, Samsung concurrently filed two petitions—one...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

The PTAB Review - October 2022

Wilson Sonsini Goodrich & Rosati on 10/11/2022

This issue of The PTAB Review begins with a brief update about the U.S. Patent & Trademark Office (USPTO) Guidelines for when institution of an America Invents Act (AIA) trial (e.g., inter partes review or post-grant review)...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: Case Studies and Trends at the PTAB Involving 35 U.S.C. § 112

Sterne, Kessler, Goldstein & Fox P.L.L.C. on 3/15/2022

Over the last 20-plus years, US Court of Appeals for the Federal Circuit cases concerning written description and enablement have become a hot-button issue in the chemical and life sciences practices. The year 2021 was no...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

Use Caution When Mapping Multi-Forum Patentability Attack

Jones Day on 12/30/2021

A recent PTAB decision in Sattler Tech Corp. v. Lyu represents an important reminder to carefully review the procedural and substantive requirements for filing a petition for an AIA trial, especially when dealing with...more

PGR Eligibility: An Uphill Climb For Transition Patents

Jones Day on 9/1/2021

A patent is eligible for post-grant review (“PGR”) only if the patent is subject to the first-inventor-to-file provisions of the AIA. In Tricam Indus., Inc. v. Little Giant Ladder Sys., LLC, the PTAB explained that...more

In Two Life Sciences Cases, the Supreme Court Declines to Address the Constitutionality of IPRs of Pre-AIA Patents

Herbert Smith Freehills Kramer on 7/2/2020

Last week, the U.S. Supreme Court declined to review the constitutionality of inter partes review proceedings (IPRs) challenging patents issued before the Leahy-Smith America Invents Act (AIA). ...more

Return to Sender: PTAB Denies Government Contractor IPRs

Jones Day on 3/4/2020

After the Supreme Court’s 2019 decision in Return Mail, Inc. v. United States Postal Service, 139 S. Ct. 1853 (2019), held that federal agencies are not “persons” eligible to challenge a patent at the PTAB, the government was...more

Did You Know About Supplemental Examination?

Troutman Pepper Locke on 12/11/2019

The America Invents Act (AIA) ushered in an era of Patent Office trials to adjudicate the validity of issued patents. The AIA, however, created an additional, lesser used, avenue to address patent validity. This procedure is...more

Return Mail Inc. v. United States Postal Service

Ladas & Parry LLP on 9/23/2019

On June 20, 2019, the United States Supreme Court held that government entities could not be considered “persons” entitled to challenge patents owned by others before the Patent Trial and Appeal Board (PTAB)....more

Courts Eliminate Rights and Immunities of Governments in PTAB

Morrison & Foerster LLP on 7/12/2019

Recently, the Federal Circuit issued a series of decisions that address the rights and immunities that the federal and state government have when they become party to a post-grant proceeding before the Patent Trial and Appeal...more

PTAB Strategies and Insights - June 2019: Supreme Court Eliminates Government as a Party Who Can File AIA Action at PTAB

Sterne, Kessler, Goldstein & Fox P.L.L.C. on 6/24/2019

In Return Mail, Inc. v. U.S. Postal Serv., 17-1594, Justice SOTOMAYOR wrote for the majority to overturn a Federal Circuit decision that the U.S. Postal Service had standing to petition for covered business method review. The...more

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