News & Analysis as of

Patent Trial and Appeal Board Intellectual Property Protection

Morgan Lewis

USPTO Tightens Limits on AAPA Use in IPRs Following Qualcomm Precedent

Morgan Lewis on

A recent memo from the acting director of the US Patent and Trademark Office directs the Patent Trial and Appeal Board (PTAB) to reject inter partes review (IPR) petitions that use “applicant admitted prior art (AAPA), expert...more

Jones Day

Acting Director Reverses Previous Discretionary Denial

Jones Day on

For the first time under the bifurcated institution procedures, the Acting Director reversed her own prior discretionary denial, citing changed circumstances based on a settlement in the parallel district court litigation. ...more

White & Case LLP

The Federal Circuit clarifies AIA derivation standards: Independent conception is key

White & Case LLP on

In its first precedential review of an AIA derivation proceeding, the Federal Circuit held that to prove derivation, a petitioner has the burden of showing that the petitioner conceived the claimed subject matter and...more

Loeb & Loeb LLP

White House Executive Order Disbands Patent Examiners’ Union

Loeb & Loeb LLP on

On Thursday, August 28, 2025, the President of the United States issued an Executive Order which effectively disbanded the union representing patent examiners (POPA). As a justification, the Order stated patent examiners are...more

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

U.S. IP Update – August 2025

Sterne Kessler’s U.S. IP Update is a newsletter delivering the latest developments in U.S. intellectual property law, tailored for companies and legal counsel in Korea. Stay informed on key court decisions, policy changes,...more

Quinn Emanuel

Patent Trial and Appeal Board Issues New Guidance Regarding Use of "General Knowledge" in IPR Petitions

Quinn Emanuel on

On July 31st, the Patent Trial and Appeal Board ("PTAB") issued a three-page memorandum stating that it will “enforce and no longer waive the requirement of 37 C.F.R. § 42.104(b)(4).”...more

Ballard Spahr LLP

Life Sciences Perspective On Emerging U.S. Patent Reform Efforts

Ballard Spahr LLP on

Though largely absent from mainstream news, proposed reforms to patent law are poised to affect everything from biotech startups to major pharmaceutical R&D programs. Specifically, there are four ongoing bipartisan efforts to...more

Alston & Bird

Intellectual Property Litigation Newsletter | August 2025

Alston & Bird on

Welcome to the Intellectual Property Litigation Newsletter, our review of decisions and trends in the intellectual property arena. In this edition, we learn that duping the court can prove costly, excluding a witness may...more

Venable LLP

Spotlight On: Neulasta® (pegfilgrastim) / Fulphila® (pegfilgrastim-jmdb) / Udenyca® (pegfilgrastim-cbqv) / Ziextenzo®...

Venable LLP on

Pegfilgrastim Challenged Claim Types in IPR and Litigation: Claims include those challenged in litigations and IPRs. Claims are counted in each litigation and IPR, so claims from the same patent challenged in multiple...more

Jones Day

Two Week Deadline for PTAB to Issue Notice of Filing Date Accorded

Jones Day on

On July 18, 2025, Scott R. Boalick, Chief Administrative Patent Judge for the Patent Trials and Appeals Board (“PTAB”), announced that, absent good cause, the PTAB will issue a Notice of Filing Date Accorded within 14 days...more

McDonnell Boehnen Hulbert & Berghoff LLP

In re BAC IP B.V. (Fed. Cir. 2025)

A patent applicant dissatisfied by an patent examiner's rejection of that applicant's claims in ex parte prosecution has recourse by appeal to the Patent Trial and Appeal Board (PTAB) under 35 U.S.C. § 134, and to the Federal...more

Jones Day

Subsequent Challenge Does Not Justify Discretionary Denial

Jones Day on

In a recent decision, Acting Director Coke Morgan Stewart denied a Patent Owner’s request for discretionary denial in LifeVac, LLC v. DCSTAR, Inc., IPR2025-00454. Even though Petitioner had previously challenged the same...more

Jones Day

Acting Director Clarifies Multi-Petition Policy for Competing Constructions

Jones Day on

On June 25, 2025, Acting Director Coke Stewart released an informative decision vacating institution of inter partes review (“IPR”) based on two petitions that were primarily filed to present two different constructions....more

McDermott Will & Schulte

Game over: Prior interference doesn’t preclude IPR proceeding

The US Court of Appeals for the Federal Circuit affirmed a Patent Trial & Appeal Board unpatentability determination during an inter partes review (IPR) proceeding, concluding that the Board’s decision to not apply...more

Goodwin

Fresenius Files Two IPRs Against Regeneron Aflibercept Patents

Goodwin on

On July 14, 2025 Fresenius filed two IPR petitions challenging Regeneron’s patents related to aflibercept. Regeneron has not asserted that Fresenius infringes either of these patents in district court litigation; however,...more

A&O Shearman

Non-Application Of Interference Estoppel By PTAB In An IPR Institution Decision Found To Be Unreviewable

A&O Shearman on

On July 22, 2025, the Court of Appeals for the Federal Circuit concluded that the Patent Trial and Appeal Board’s (the “PTAB”) decision not to apply interference estoppel and, therefore, to institute an inter partes review...more

ArentFox Schiff

USPTO Ends Remote PTAB Hearings Effective September 1

ArentFox Schiff on

The US Patent and Trademark Office (USPTO) has announced that, effective September 1, all PTAB hearings will be conducted in person at USPTO offices, marking a departure from the virtual and hybrid formats adopted in recent...more

ArentFox Schiff

Overcoming the ‘Settled Expectations’ Doctrine: Guidance From Intel v. Proxense

ArentFox Schiff on

Last month, we provided an overview of the Patent Trial and Appeal Board’s (PTAB) application of the “settled expectations” doctrine, articulated in recent PTAB director-level decisions. Interim Director Coke Morgan Stewart...more

Jones Day

“Settled-Expectations” Analysis May Leave Some Petitioners Feeling Unsettled

Jones Day on

As discretionary denials are on the rise and institution rates are declining at the PTAB (link), recent decisions from the PTAB have introduced the notion of a patent owner’s “settled expectations” as another reason for the...more

Jones Day

Discretionary Denial Where Inventors Petitioned for Unpatentability

Jones Day on

Coke Morgan Stewart, the acting director of the United States Patent and Trademark Office (“USPTO”), exercised discretion under 35 U.S.C. § 314(a) to deny Tessell’s (“Petitioner’s”) petition in favor of Nutanix (“Patent...more

Jones Day

Discretionary Denial of IPR Institution Due to Advanced Hatch-Waxman Litigation

Jones Day on

In a recent decision, the Patent Trial and Appeals Board (“PTAB”) exercised its discretion under 35 U.S.C. § 314(a) to deny institution of an inter partes review (“IPR”) after applying the Fintiv factors, despite Petitioner’s...more

DLA Piper

The Battle for CRISPR: Federal Circuit Draws a Crisp Line Between Conception and Reduction to Practice

DLA Piper on

The dispute over who invented CRISPR-Cas9 (CRISPR), a gene-editing technology awarded the 2020 Nobel Prize in Chemistry, has been one of the most closely watched legal battles in the world of biotechnology. For more than a...more

Knobbe Martens

Federal Circuit Review | June 2025

Knobbe Martens on

In Dolby Laboratories Licensing Corporation V. Unified Patents, LLC, Appeal No. 23-2110, the Federal Circuit held that a patent owner lacks Article III standing to appeal an inter partes review decision on patentability when...more

Morgan Lewis

‘Settled Expectations,’ PTAB’s New Discretionary Denial Factor, Gains Additional Footing in Dabico

Morgan Lewis on

Acting Director of the USPTO Coke Morgan Stewart recently discretionarily denied institution of an inter partes review (IPR) based on a new consideration, “settled expectations,” that is, the length of time that the...more

Jones Day

Physical Products Cannot Form Basis of an IPR

Jones Day on

On May 1, 2025, the Patent Trial and Appeal Board (PTAB) denied institution of inter partes review (IPR) of U.S. Patent No. 11,140,841 in the case of Aardevo North America, LLC v. Agventure B.V. The patent in question, owned...more

1,042 Results
 / 
View per page
Page: of 42

"My best business intelligence, in one easy email…"

Your first step to building a free, personalized, morning email brief covering pertinent authors and topics on JD Supra:
*By using the service, you signify your acceptance of JD Supra's Privacy Policy.
- hide
- hide