News & Analysis as of

Litigation Strategies United States Patent and Trademark Office

Baker Botts L.L.P.

Discretionary Denials at the PTAB: Strategic Insights for Petitioners and Patent Owners in a Shifting Landscape

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A set of recently issued memoranda by United States Patent and Trademark Office (“USPTO”) officials has re-energized the debate around discretionary denials in post-grant trials at the Patent Trial and Appeal Board (“PTAB”)....more

Haug Partners LLP

Settled Expectations: How the PTAB’s New Discretionary Denial Framework Is Reshaping IPR Strategy

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In a recent article, Haug Partners previewed that the impact of the Patent Trial and Appeal Board’s (PTAB) new bifurcated approach to discretionary denial requests would depend on how the new Acting USPTO Director, Coke...more

Seyfarth Shaw LLP

Know the Rules or Get Burned: TTAB Smolders Oppositions for Failure to Prosecute

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In Adaptive Energy LLC v. Central Coast Agriculture, Inc., the Trademark Trial and Appeal Board (“Board”) dismissed two oppositions for failure to prosecute. Oppositions Nos. 91275644 and 91280840 (April 11, 2025). The...more

Vinson & Elkins LLP

File Early or Risk Denial: iRhythm IPR Institution Denial Underscores the Importance of Filing IPR Petitions Sooner Rather Than...

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On June 6, 2025, the Acting Director of the United States Patent and Trademark Office (“USPTO”), Coke Morgan Stewart, issued a decision denying institution of five inter partes review (“IPR”) petitions filed by iRhythm, Inc....more

Proskauer - The Patent Playbook

Discretionary Denials in Action: iRhythm Technologies Inc. v. Welch Allyn Inc.

The U.S. Patent and Trademark Office (“USPTO”) Acting Director’s recent decision to deny institution of inter partes review (“IPR”) in iRhythm Technologies Inc. v. Welch Allyn Inc. offers valuable lessons for both patent...more

Jones Day

Applying Fintiv to a Parallel ITC Investigation

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The Patent Trial and Appeals Board (“PTAB”) recently denied institution of an inter partes review (“IPR”), exercising its discretion under 35 U.S.C. § 314(a)and Apple Inc. v. Fintiv Inc., IPR2020-00019 (PTAB Mar. 20, 2020)...more

Akin Gump Strauss Hauer & Feld LLP

Director Vacates Decision to Institute: Investment in Parallel Proceeding Outweighed Petitioner’s Sotera Stipulation

The USPTO Director vacated the board’s decision to institute inter partes review based on an erroneous application of the Fintiv factors. Specifically, the Director found that the board placed too much emphasis on...more

Proskauer - The Patent Playbook

Value and Risk of Overlapping Intellectual Property Protections

A well-orchestrated intellectual property strategy requires carefully and thoughtfully leveraging copyright, trademark, and patent laws, as highlighted by a recent decision handed down by the United Sates Court of Appeals for...more

Baker Botts L.L.P.

Impact of New USPTO Interim Procedures on Discretionary Denial of AIA Proceedings

Baker Botts L.L.P. on

Key Takeaway: The USPTO has reinstated earlier discretionary denial standards (including Fintiv) and introduced a new two-phase review process, which is expected to lead to more frequent denials of IPR petitions. Both patent...more

Rothwell, Figg, Ernst & Manbeck, P.C.

Understanding the PTAB’s Recent Informative Decision: Cambridge Mobile Telematics, Inc. v. Sfara, Inc.

The Patent Trial and Appeal Board (PTAB) recently designated its decision in Cambridge v. Sfara (IPR2024-00952) as an informative decision.[1] This designation addresses an important issue in inter partes review (IPR)...more

Morgan Lewis

A New Era for the PTAB: Discretion Returns, Layoffs Loom, and Early Challenges Encouraged

Morgan Lewis on

The USPTO has launched a sweeping recalibration of its post-grant proceedings at the PTAB, signaling a decisive pivot back toward discretionary denials of patent challenges. With the rescission of prior procedural guidance, a...more

Mayer Brown

Examining New Guidance from the USPTO on Discretionary Denials in AIA Post-Grant Proceedings

Mayer Brown on

Recent changes at the US Patent and Trademark Office (USPTO) concerning the Patent Trial and Appeal Board's (PTAB) discretion to deny institution of inter partes reviews (IPRs) or post-grant reviews (PGRs) based on parallel...more

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

Does Your Office Post-Grant Strategy Account for the Rise of Serial Challenges Flowing From the PTAB to the CRU?

After eight weeks of shifts in governmental policies, the patent bar is feeling repercussions from all directions. One critical area in flux is the post-grant challenge arena. With a reduced PTAB head count and a steady...more

Baker Botts L.L.P.

The Impact of Prosecution Length on Infringement Outcomes in Patent Litigation

Baker Botts L.L.P. on

This article continues our analysis of over 89,000 patents to determine how the number of office actions to allowance during prosecution impacts litigation outcomes. Last month we discussed how prosecution length impacts...more

Holland & Knight LLP

New Guidance Regarding Fintiv Discretionary Denial at the PTAB

Holland & Knight LLP on

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

Hudnell Law Group

PTAB Recalibrates Review: New Discretionary Denial Framework and Pre-Institution Reform

Hudnell Law Group on

In less than a month, the United States Patent and Trademark Office (“USPTO”) has dramatically reformed its policies and procedures for exercising its discretion to deny institution of AIA post-grant proceedings. First, on...more

Kilpatrick

5 Key Takeaways | Building a Winning Evidentiary Record at the PTAB (and Surviving Appeal)

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Kilpatrick partners John Alemanni and Justin Krieger recently presented a CLE addressing “Building a Winning Evidentiary Record at the PTAB (and Surviving Appeal).” * The opinions expressed are those of the attorneys and do...more

MoFo Life Sciences

USPTO Considers Changing Terminal Disclaimer Practice To Require Agreement Regarding Enforceability

MoFo Life Sciences on

On May 10, 2024, the USPTO issued a Notice of Proposed Rulemaking that proposes major changes to terminal disclaimer practice that could greatly affect both patent prosecution and patent litigation strategies. Specifically,...more

Wolf, Greenfield & Sacks, P.C.

Sued: What In-House Counsel Without Litigation Experience Need to Know - Finding Your Outside Team

2: Finding Your Outside Team - This is the second in a series of articles that explores considerations and suggested actions for in-house counsel who are inexperienced in patent litigation, yet facing such a suit. The first...more

American Conference Institute (ACI)

[Event] 22nd Advanced Summit on Life Sciences - May 29th - 30th, New York, NY

Hosted by American Conference Institute, the 22nd Advanced Summit on Life Sciences Patents returns for another exciting year with curated programming that will provide practical insights on how to maximize your patent term...more

McDonnell Boehnen Hulbert & Berghoff LLP

Rethinking In re Cellect and Its Consequences

The Federal Circuit's In re Cellect decision has caused a great deal of commentary and proposals to avoid its consequences, including changing prosecution strategies and filing prospective, precautionary terminal disclaimers...more

American Conference Institute (ACI)

[Event] 20th Paragraph IV Disputes - April 25th - 26th, New York, NY

Hosted by American Conference Institute, the 20th Annual Paragraph IV Disputes & the 40th Anniversary of the Hatch-Waxman Act returns for another exciting year with curated programming that will take a retrospective look at...more

American Conference Institute (ACI)

[Event] 18th Annual Paragraph IV Disputes - April 19th - 20th, New York, NY

Hosted by ACI, 18th Annual Paragraph IV Disputes Conference returns to New York City for another exciting year with curated programming that not only addresses the hot topics, but also puts them within the context of pre-suit...more

American Conference Institute (ACI)

[Event] 17th Annual Paragraph IV Disputes Conference - April 26th - 27th, New York City, NY

Premier forum which shapes the law, policy, and proceedings of Paragraph IV Litigation is back to New York City on April 26-27! Pharmaceutical patent practitioners from across the globe attend this flagship conference to...more

American Conference Institute (ACI)

[Virtual Conference] PTAB Practice Briefing - December 2nd, 10:00 am - 6:00 pm EST

Year-End Analysis and Future Forecasts on the Most Significant Developments Impacting Post-Grant Proceedings. Attend ACI’s inaugural PTAB Practice Briefing virtually on December 2nd for in-depth discussions and year-end...more

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