News & Analysis as of July 17, 2025

Administrative Proceedings

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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 -

PTAB Issues FAQs on Interim Process for Workload Management

Fish & Richardson on 4/28/2025

Last week, the Patent Trial and Appeal Board (PTAB) issued a list of FAQs related to the new bifurcated process for discretionary denial established in the March 26 memorandum issued by Acting Director Stewart. The FAQs...more

USPTO Provides Interim Guidance on PTAB Discretionary Denials Under Fintiv

Stinson LLP on 6/23/2022

On June 22, 2022, the U.S. Patent and Trademark Office (USPTO) announced new interim guidance regarding discretionary denials of patent challenges at the Patent Trial and Appeal Board (PTAB) based on parallel litigation. The...more

Fed. Cir. Rejects New IPR Constitutional Challenges

Jones Day on 10/26/2021

In Mobility Workx, LLC v. Unified Patents, LLC, the Federal Circuit in a split decision concluded that Mobility Workx, LLC’s constitutional challenges to structure and funding of the Patent Trial and Appeal Board (“PTAB”) are...more

Federal Circuit Holds That the PTAB Does Not Have an Impermissible Incentive to Institute IPRs

Knobbe Martens on 10/14/2021

MOBILITY WORKX, LLC v. UNIFIED PATENTS, LLC Before Newman, Schall, and Dyk. Appeal from the Patent Trial and Appeal Board. Summary: Fee-funded structure of AIA review proceedings does not violate due process....more

Motion to Amend Pilot Program Extended

Jones Day on 9/21/2021

The United States Patent and Trademark Office (USPTO) announced plans for the Patent Trial and Appeal Board (PTAB) to extend the Motion to Amend (MTA) pilot program. This program provides additional options for a patent owner...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

Navigating IPRs and other AIA Reviews as Power Shifts to the USPTO Director

Akerman LLP on 8/11/2020

America Invents Act Reviews, or "AIA Reviews" are administrative proceedings which can be used to seek the invalidity of a U.S. Patent. After their creation in 2011, AIA reviews have become an important component of patent...more

PTAB Strategies and Insights - January 2020: Chaos All Around - Arthrex and Alice

Sterne, Kessler, Goldstein & Fox P.L.L.C. on 2/5/2020

The only real answers we are hearing from the patent community is that no one knows what to do or what might happen next --- post Arthrex. As a quick reminder – the Federal Circuit ruled (1) the current PTAB judges were...more

The PTAB and the Arthrex Decision: A Constitutional Question

Polsinelli on 12/4/2019

The Appointments Clause of the U.S. Constitution1 provides that “principal officers” of the United States must be appointed by the President upon the advice and consent of the Senate. “Inferior officers,” on the other hand,...more

PTAB Strategies and Insights - October 2019: Graphical Snapshot of Supplemental Examination

Sterne, Kessler, Goldstein & Fox P.L.L.C. on 11/5/2019

Supplemental Examination was born out of fixing potential inequitable conduct issues before they are raised in a court proceeding. 35 U.S.C. § 257(a); 27 CFR § 1.601; M.P.E.P. § 2800. The stated goal is to improve patent...more

PTAB Strategies and Insights - April 2019

Sterne, Kessler, Goldstein & Fox P.L.L.C. on 4/25/2019

The PTAB Strategies and Insights newsletter provides timely updates and insights into how best to handle proceedings at the USPTO. It is designed to increase return on investment for all stakeholders looking at the entire...more

USPTO Announces Sweeping Changes to Motion to Amend Procedures in AIA Trials via Pilot Program

Sterne, Kessler, Goldstein & Fox P.L.L.C. on 3/18/2019

On March 15, 2019, the United States Patent and Trademark Office (USPTO) launched a pilot program that implements significant changes to motion to amend practice in AIA trials. The Office states that its goal in proposing...more

PTAB Strategies and Insights - November 2018: The Growing Influence of Post-Grant Proceedings in Section 337 Investigations

Sterne, Kessler, Goldstein & Fox P.L.L.C. on 12/3/2018

Since the passage of the Leahy-Smith America Invents Act (AIA), post-grant proceedings at the U.S. Patent and Trademark Office (USPTO) are interacting more with Section 337 investigations at the International Trade Commission...more

Observations: Five Months After Supreme Court SAS Institute

Jones Day on 10/25/2018

As an update to the May 15, 2018 post, available here, some post-SAS trends appear to be taking shape. For the five-month period from May 2018 through September 2018, the PTAB issued 538 institution decisions. Of these, the...more

PTAB Abandons Its Practice Of Broadly Interpreting Claims Of Challenged Patents In Favor Of Phillips Standard Of “Ordinary And...

Troutman Pepper Locke on 10/12/2018

In a final rule published in the Federal Register on October 11, 2018, the U.S. Patent and Trademark Office (USPTO) took a remarkable step of acknowledging unfairness in the way its Patent Trial and Appeal Board (PTAB) has...more

USPTO Changes Claim Construction Standard Used In AIA Trial Proceedings

Shook, Hardy & Bacon L.L.P. on 10/12/2018

On October 10, 2018, the United States Patent & Trademark Office (USPTO) published a final rule that changes the current “broadest reasonable interpretation” or BRI standard used in inter partes review (IPR), post grant...more

Recent Update on Patent Trial Practice Guide

Knobbe Martens on 9/4/2018

The United States Patent and Trademark Office (USPTO) published an update to the AIA Trial Practice Guide (‘‘Trial Practice Guide’’) in August 2018 to revise guidance on practices before the Patent Trial and Appeal Board...more

When SCOTUS Said No Partial Institution, It Meant All Challenged Grounds

McDermott Will & Emery on 8/29/2018

In light of the Supreme Court of the United States decision in SAS Institute v. Iancu (IP Update, Vol. 21, No. 5), the US Court of Appeals for the Federal Circuit remanded an appeal from the Patent Trial and Appeal Board...more

SAS "Ground" Rules

Foley & Lardner LLP on 6/18/2018

In a quartet of recent decisions, the Federal Circuit has confirmed that SAS Institute extends beyond mandating the inclusion of all claims when trial is instituted, and extends to all grounds as well. These decisions confirm...more

Chief Judge Guidance: SAS Impact, Motions to Amend, and Claim Construction

Jones Day on 6/11/2018

On June 5, 2018, Chief Judge David Ruschke and Vice Chief Judge Tim Fink of the Patent Trial and Appeals Board (PTAB) participated in a webinar providing new guidance on three topics: (1) the new claim construction standard...more

Observations: Three Weeks After Supreme Court’s SAS Institute Decision

Jones Day on 5/16/2018

Anyone reading this post is likely well aware that on April 24 the Supreme Court put an end to the PTAB’s practice of instituting inter partes review (IPR) on less than all claims challenged in an IPR petition in SAS...more

SAS Institute Follow-Up: New PTAB Procedures and Strategies

Latham & Watkins LLP on 5/11/2018

The PTAB’s new guidance in light of a recent Supreme Court ruling changes the dynamics for patent owners and petitioners. Key Points: ..Partial institutions are no longer permitted. The PTAB will review all petitioned...more

Patent System after Oil States and SAS – What’s the future?

Foley & Lardner LLP on 5/7/2018

On April 24th, the Supreme Court decided two important cases related to the United States Patent & Trademark Office’s inter partes review (IPR) proceedings for reconsidering the prior grant of a patent – Oil States Energy...more

Supreme Court Affirms Constitutionality of Inter Partes Review

Bradley Arant Boult Cummings LLP on 5/1/2018

In Oil States Energy Services, LLC v. Greene’s Energy Group, LLC, the Supreme Court rejected constitutional challenges to the America Invents Act’s inter partes review process. The court held that inter partes review (IPR)...more

[Webinar] Supreme Court Issues Decisions in Oil States and SAS Cases: A Discussion of the Impact on Patent Law and Inter Partes...

BakerHostetler on 5/1/2018

This timely and fast-moving webinar provides insight for business leaders and legal counsel on the recently issued Supreme Court decisions in Oil States Energy Services, LLC v. Greene’s Energy Group, LLC and SAS Institute...more

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