News & Analysis as of

Corporate Counsel Inter Partes Review (IPR) Proceeding America Invents Act

McCarter & English, LLP

New Patent Office Guidance Raises Bar for IPR Petitioners

The Patent Office recently announced that it will begin enforcing a rule that requires that inter partes review (IPR) petitions “specify where each element of the claim is found in the prior art patents or printed...more

A&O Shearman

Federal Circuit Issues Key Ruling On Collateral Estoppel And Patent Invalidity

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The Federal Circuit recently issued a decision in the ongoing dispute in Kroy IP Holdings, LLC v. Groupon, Inc., addressing the collateral estoppel effect of Patent Trial and Appeal Board (PTAB) decisions on subsequent...more

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

2024 PTAB Year in Review: Analysis & Trends

The Patent Trial and Appeal Board (PTAB) continues to play a pivotal role in shaping the intellectual property landscape. In 2024, several developments affecting PTAB practice emerged, from new rulemaking at the USPTO to key...more

Jones Day

PTAB AIA FY2024 Roundup: Key Insights and Statistics

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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

DLA Piper

USPTO Director’s Decision Highlights Consequences of Evidence Suppression

DLA Piper on

In a rare exercise of authority through a sua sponte director review, US Patent and Trademark Office (USPTO) Director Kathi Vidal affirmed the Patent Trial and Appeal Board (PTAB)’s decision to sanction patent owner Longhorn...more

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

2023 PTAB Year in Review: Analysis & Trends: Federal Circuit Cases Exploring a Year of Rules, Rulemaking, and Rule Enforcement at...

A trio of cases this past year illustrate a trend of increasing importance in the power of Patent-Office rulemaking and enforcement, and the influence it has on patent owners and challengers alike....more

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

2023 PTAB Year in Review: Analysis & Trends

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

Sheppard Mullin Richter & Hampton LLP

PTAB Makes Significant Changes to Director Review Process

After considering comments from various stakeholders for nearly a year, on July 24, 2023, the USPTO issued the revised interim Director Review Process. Among other changes, the revised process now permits parties to request...more

Morrison & Foerster LLP

USPTO Proposed Rulemaking Could Reshape Post-Grant Practice Under the AIA

On April 21, the U.S. Patent and Trademark Office (USPTO) published an Advanced Notice of Proposed Rulemaking (ANPRM), based on a Request for Comments (RFC) published in 2020. The ANPRM sets forth a series of proposed rule...more

McDermott Will & Schulte

Clarification or Raising the Bar? PTO Director Issues New Guidance for Discretionary PTAB Denials

On June 21, 2022, US Patent & Trademark Office (PTO) Director Katherine K. Vidal issued a memorandum addressing interim procedures for discretionary denials in America Invents Act (AIA)-post grant proceedings at the Patent...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

McDermott Will & Schulte

2022 IP Outlook Report: The Developments Shaping Patent Law

KEY TAKEAWAYS AND OUTLOOK FOR 2022 - Tracking with this era’s continuation and uncertainty trends―global supply chain disruption, innovation outpacing legislation, the unstoppable internet of [all the] things (IoT)―2022 is...more

Orrick, Herrington & Sutcliffe LLP

PTAB Snapshot – A Quarterly Report on Trends and New Precedent at the PTAB – Q3 The Arthrex Decision, Its Impact on Prior IPR...

In this second edition of Orrick’s quarterly series on the PTAB, we summarize the Arthrex decision, walk through the PTO’s post-Arthrex interim procedure for reviewing PTAB decisions, and discuss potential post-Arthrex...more

Wilson Sonsini Goodrich & Rosati

2020 PTAB Year in Review

The firm's post-grant practice is pleased to present its 2020 PTAB Year in Review. The publication begins with a review of 2020 petition filings at the Patent Trial and Appeal Board (PTAB) and takes a closer look at the...more

Skadden, Arps, Slate, Meagher & Flom LLP

Supreme Court: Parties Cannot Appeal PTAB Decision To Institute Inter Partes Review of Allegedly Time-Barred Claims

On April 20, 2020, the U.S. Supreme Court issued a 7-2 decision in Thryv, Inc. v. Click-To-Call Technologies, LP, ruling Section 314(d) of the America Invents Act (AIA) precludes the appeal of a decision by the Patent Trial...more

Faegre Drinker Biddle & Reath LLP

Following Up after Oral Argument in Thryv, Inc. fka Dex Media Inc. v. Click-to-Call Technologies, LP

On June 24, 2019, the Supreme Court granted the petition for certiorari in Thryv, Inc. fka Dex Media Inc. v. Click-to-Call Technologies, LP on the question of whether 35 U.S.C. § 314(d) permits appeal of the Patent Trial and...more

White & Case LLP

Can Late IPR Petitions Be Appealed? Analyzing the Supreme Court's Oral Argument in Thryv, Inc. v. Click-to-Call Technologies

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White & Case Technology Newsflash - On December 9, 2019, the Supreme Court heard oral arguments in Thryv, Inc. v. Click-to-Call Technologies, Case No. 18-916. The case involves the proper application of Section 315(b) of the...more

Sunstein LLP

Beware: Run-of-the-Mill Forum Selection Clause Could Thwart Patent Challenges

Sunstein LLP on

A patent infringement and breach of contract lawsuit in San Francisco may result in a sea change in the ability of licensees to challenge the validity of patents covered by their license. At stake is whether patent owners can...more

Nutter McClennen & Fish LLP

5 Patent Law Petitions to Watch at the Supreme Court

As the 2018-2019 Supreme Court term nears its end, several consequential patent law petitions still await certiorari rulings before the Justices recess for the summer, while other patent cases are scheduled to be briefed and...more

Mintz - Intellectual Property Viewpoints

Significant 2018 Patent Decisions and a Look Ahead

This year the Supreme Court, United States Court of Appeals for the Federal Circuit, and the Federal District Courts penned a number of opinions impacting patent law. Here are some key takeaways from the past year....more

Weintraub Tobin

IP Challenges Again Take The Stage At The U.S. Supreme Court

Weintraub Tobin on

Intellectual property disputes will again take their place on stage at the U.S. Supreme Court this term when the court addresses at least two IP questions. 1. Can the government challenge patents under the America Invents...more

McDermott Will & Schulte

Tick Tock: Even a Dismissed Complaint Counts Toward Time Bar

The US Court of Appeals for the Federal Circuit vacated a final Patent Trial and Appeal Board (PTAB) decision in an inter partes review (IPR) that held all challenged claims of a patent unpatentable, finding that the petition...more

Skadden, Arps, Slate, Meagher & Flom LLP

2017-18 Supreme Court Update

In the 2017-18 term, the U.S. Supreme Court will decide a number of potentially significant disputes relevant to businesses, including those involving constitutional protections, class actions and other corporate liability...more

Fish & Richardson

PTAB Issues Only Its Third Post-Grant Review Decision to Date, Invalidates Storage Container Tracking Claims Directed to...

Fish & Richardson on

On August 2, 2016, the Patent Trial and Appeal Board (PTAB), in proceeding PGR2015-00009, invalidated a patent for storage container tracking and delivery as being directed to patent-ineligible subject matter under 35 U.S.C....more

Foley & Lardner LLP

IPR Proactive Defense Measures – Strategies and Considerations for Patent Owners

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Many patent owners have not yet had to defend against an inter partes review (IPR), but the popularity of this proceeding increases the chances that they will encounter it down the road if they have not already faced one....more

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