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Patent Trial and Appeal Board United States Patent and Trademark Office

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

King & Spalding

Live Long and Patent: Lessons from Captain Kirk’s Encounter with the PTAB

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In a tale that boldly goes where few celebrity inventors have gone before, William Shatner—yes, that William Shatner—alongside two co-inventors, filed a patent application for a “Smartphone Organization System and...more

WilmerHale

PTAB/USPTO Update - September 2025

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On August 28, President Trump nullified via executive order the USPTO’s December 2024 Collective Bargaining Agreement (CBA), which covers approximately 9,000 patent examiners and other professionals at the USPTO....more

Knobbe Martens

[Webinar] Dodging Denial: Winning Strategies for PTAB Petitions Post-Fintiv - September 18th, 12:00 pm - 1:00 pm PT

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Join Knobbe Martens partners Christy Lea and Ted Cannon for a strategic deep dive into the evolving PTAB landscape. With discretionary denials on the rise following the USPTO’s March 24 guidance, this session will equip...more

Fish & Richardson

Attorney-Client Privilege for Foreign Patent Agents and European Patent Attorneys

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Attorney-client privilege refers to the protection of confidential communications made for the purpose of obtaining or providing legal advice. Application of and exceptions to this privilege are fact-based determinations made...more

Jones Day

Acting Director Reverses Previous Discretionary Denial

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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

Proskauer - The Patent Playbook

Crypto Unlocked: New Patent Eligibility Guidance on Blockchain Technology  

The U.S. gave crypto one of its biggest regulatory jolts in years. With the signing of the Guiding and Establishing National Innovation for U.S. Stablecoins (“GENIUS”) Act stablecoins now have a legal framework. The GENIUS...more

Loeb & Loeb LLP

White House Executive Order Disbands Patent Examiners’ Union

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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

Mintz - Intellectual Property Viewpoints

The PTAB Pendulum Swings: How IPR Denials are Reshaping Patent Owner and Challenger Strategies

Post-grant proceedings at the Patent Trial and Appeal Board (PTAB) are undergoing sweeping transformation. Over the past year, as other federal agencies have grown cautious to avoid further budget constraints and downsizing,...more

McCarter & English, LLP

Navigating the Landscape of Patent Challenges at the USPTO

Challengers striving to beat higher-ranked opponents at the US Open tennis tournament happening now in New York are not the only challengers facing tricky new situations. Parties wishing to challenge the validity of US...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

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

Federal Circuit Issues First Decision on Litigated AIA Derivation Proceeding

In Global Health Solutions LLC v. Selner, the Federal Circuit addressed for the first time an appeal from a derivation proceeding litigated before the Patent Trial and Appeal Board (PTAB) under the America Invents Act (AIA)....more

Ballard Spahr LLP

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

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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

McDonnell Boehnen Hulbert & Berghoff LLP

DexCom, Inc. v. Stewart (Fed. Cir. 2025)

The Federal Circuit affirmed a decision by the U.S. Patent and Trademark Office (USPTO) Patent Trial and Appeal Board (PTAB) in an inter partes review prompted by an infringement allegation in DexCom, Inc. v....more

Goodwin

PTAB Discretionarily Denies Two Petitions, Refers a Third to the Board in Amgen v. Bristol-Myers Squibb

Goodwin on

On July 24, 2025, Acting Director of the USPTO, Coke Morgan Stewart, denied institution of inter partes review in IPR2025-00601 and IPR2025-00602, but referred the petition in IPR2025-00603 to the Board in Amgen Inc. v....more

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

“At Your Discretion” — Discretionary Denials Increase as PTAB Issues Institution Decisions

The first half of 2025 has brought many changes at the United States Patent and Trademark Office (“USPTO”), including policy changes at the Patent Trial and Appeal Board (“PTAB”). At the end of March 2025, the issuance of the...more

Morgan Lewis

USPTO Memo Clarifies AI/ML Patent Eligibility Rules

Morgan Lewis on

Deputy Commissioner for Patents Charles Kim issued a memorandum to three technology centers reminding examiners how subject matter eligibility should be evaluated under 35 USC § 101. These technology centers often handle...more

King & Spalding

USPTO Acting Director Stewart Limits Use of General Knowledge in IPR Petitions

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On July 31, 2025, Acting USPTO Director Coke Morgan Stewart released a memo instructing the agency “that applicant admitted prior art (AAPA), expert testimony, common sense, and other evidence that is not ‘prior art...more

Fenwick & West LLP

Navigating the PTAB’s New Discretionary Denial Landscape: Strategic Shifts for Patent Challenges

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The Patent Trial and Appeal Board (PTAB) has undergone significant changes in how it evaluates patent challenges, creating both opportunities and obstacles for technology and life sciences companies....more

Jones Day

Cancellation of Claims Deemed An Inappropriate Sanction

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USPTO Acting Director Stewart sua sponte reconsidered and modified a previous Director Review decision that had affirmed cancellation of all 183 challenged claims as a sanction against patent owner Longhorn Vaccines. ...more

McDermott Will & Schulte

Use of general knowledge in IPR petitions will no longer work

On July 31, 2025, the US Patent & Trademark Office (PTO) issued a memo clarifying the requirements under 37 C.F.R. § 42.104(b)(4) for inter partes review (IPR) petitions. The memo emphasizes that petitioners must clearly...more

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

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

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

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