News & Analysis as of

Patents Patent Trial and Appeal Board Corporate Counsel

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

Fish & Richardson

USPTO Limits Use of General Knowledge in IPR Proceedings

Fish & Richardson on

On July 31, the United States Patent and Trademark Office issued a memorandum (“Memo”) announcing that the Office will renew enforcement of 37 C.F.R. § 42.104(b)(4) (“Rule 104(b)(4)”) in inter partes review (IPR) proceedings....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

Dinsmore & Shohl LLP

Patent Trial and Appeal Board Hearings to be Held in Person

Dinsmore & Shohl LLP on

A recent notice from the United States Patent and Trademark Office (USPTO) informed patent owners that “Starting September 1, 2025 all Patent Trial and Appeal Board (PTAB) hearings will be held in person.” (Emphasis added)....more

A&O Shearman

The Federal Circuit Rejects PTAB’s Use Of Traditional Construction Of “Consisting Essentially Of”

A&O Shearman on

On June 30, 2025, the U.S. Court of Appeals for the Federal Circuit vacated a decision by the U.S. Patent Trial and Appeal Board (the “Board”) and remanded the case for further proceedings using a narrower construction of the...more

Akin Gump Strauss Hauer & Feld LLP

Federal Circuit Holds Applicant Admitted Prior Art Cannot Form “Part of the Basis” of an IPR Ground, Reversing a PTAB Win for...

The Federal Circuit recently reversed a PTAB determination on remand that a patent was obvious over applicant admitted prior art (“AAPA”) in combination with prior art patents, holding that expressly designating AAPA as a...more

Volpe Koenig

When an IDS Comes Back to Haunt You: Lessons from iRhythm v. Welch Allyn

Volpe Koenig on

Patent attorneys are well-versed in the function of the Information Disclosure Statement (IDS) during prosecution. We understand that listing prior art in an IDS satisfies the duty of candor, helps insulate patents from...more

McDermott Will & Schulte

It’s a Matter of Timing: The PTO’s Latest Decisions on Discretionary Denials

Since the US Patent & Trademark Office’s (PTO) decision to rescind former Director Vidal’s memo on procedures for post-grant proceedings where there is parallel district court litigation, Current Acting Director Coke Morgan...more

Fish & Richardson

Acting USPTO Director Stewart Issues First Decisions Under Interim Discretionary Denial Process

Fish & Richardson on

On Friday, May 16, the U.S. Patent and Trademark Office (USPTO) issued discretionary denial decisions in the first four matters considered under the USPTO’s new interim workload management process....more

Proskauer - The Patent Playbook

Patent Litigation and the Rise of Quantum Computing: What to Watch for in the Next Decade

A recent Patent Trial and Appeal Board decision related to hybrid quantum computing paves the way for more quantum computing-related patents, and potential litigation....more

Proskauer - The Patent Playbook

Further Shifts in Patent Office Guidance for Discretionary Denials Signal Uphill Battles for Patent Challengers

On the heels of the rescission of the Fintiv guidance memorandum, the U.S. Patent and Trademark Office has again reshaped the PTAB’s approach to discretionary denials. On March 26, 2025, the Acting Director issued a new...more

Morrison & Foerster LLP

Pivot At The PTAB: The Acting Director Bifurcates Review

With two memoranda this week, the United States Patent and Trademark Office (“USPTO”) has made significant changes to trials at the Patent Trial and Appeal Board (“PTAB”). Those trials—introduced in 2012 by the Leahy-Smith...more

Morgan Lewis

USPTO in 2025: Leadership, Operational, Legislative, and Policy Changes to Watch

Morgan Lewis on

As 2025 unfolds, changes across the patent landscape are unfolding. From agency leadership transitions to proposed legislation and evolving AI-related policies, these shifts could impact patent prosecution, post-grant...more

Kilpatrick

Patent Office Rolls Back Director Vidal's Guidance on PTAB Discretionary Denials

Kilpatrick on

On Friday, February 28, the Patent Office officially rescinded Dr. Vidal’s June 21, 2022, memorandum addressing IPR discretionary denial (“2022 Memorandum”). The 2022 Memorandum provided guidance to the PTAB in applying...more

Haug Partners LLP

Federal Circuit Limits Use of PTAB Unpatentability Rulings to Estop Patentees From Asserting Claims

Haug Partners LLP on

On February 10, 2025, the Federal Circuit issued a precedential decision in Kroy IP Holdings, LLC v. Groupon, Inc., where the Court held that a “a prior final written decision of the [PTAB] of unpatentability on separate...more

Dinsmore & Shohl LLP

Apple Prevails and Federal Circuit Puts Expert Testimony in the Spotlight

Dinsmore & Shohl LLP on

The U.S. Court of Appeals for the Federal Circuit (“CAFC”) recently issued its opinion in Apple Inc. v. Gesture Technology Partners, LLC, a case that focuses on obviousness under 35 U.S.C. §103, claim breadth and the...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

Jones Day on

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

Wolf, Greenfield & Sacks, P.C.

A Look Ahead: Key Intellectual Property Legal Developments in 2024 - and What to Expect in 2025

From potential legal challenges to Chinese biopharma supply chains, Europe’s new Unified Patent Court (UPC), landmark decisions in life sciences, pharma’s Orange Book listings, design patent rejections, and likely shifts at...more

Ropes & Gray LLP

Expected Changes to IP Policy under the Second Trump Administration

Ropes & Gray LLP on

Intellectual property (“IP”) policy does not weigh heavily on most voters’ minds, and so is not often addressed in presidential campaigns. This past campaign was no different – President-elect Donald Trump did not expressly...more

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

Trial Statistics Trends at the PTAB: 2024 Edition

At the end of each fiscal year running from October 1 through September 30, the Patent Trial and Appeal Board (“PTAB”) provides a summary of its trial statistics. This information provides practitioners with useful insight...more

McGuireWoods LLP

USPTO Director Provides Guidance on PTAB’s § 315 Time Bar Analyses

McGuireWoods LLP on

On Nov. 21, 2024, U.S. Patent and Trademark Office Director Kathi Vidal issued a Patent Trial and Appeal Board (PTAB) Director Review decision addressing 35 U.S.C. § 315(a)(1) and § 315(b), the statutes that preclude...more

Fish & Richardson

Survey Shows Trends in PTAB’s Willingness to Institute Multiple Petitions

Fish & Richardson on

The Consolidated Trial Practice Guide states that, “[t]o date, a substantial majority of patents have been challenged with a single petition.” Consolidated Trial Practice Guide (November 2019) at 59. However, “the Board...more

Irwin IP LLP

Standing in Limbo: What Platinum Optics v. Viavi Tells Us About IPR Appeals 

Irwin IP LLP on

Platinum Optics Tech. Inc. v. Viavi Solutions Inc., 2024 WL 3836107 (Fed. Cir. 2024) - On August 24, 2024, the United States Court of Appeals for the Federal Circuit (CAFC) dismissed an appeal for lack of standing after a...more

Baker Donelson

Patent Cases to Watch for in the Second Half of 2024

Baker Donelson on

As we move into the second half of the year, we are alerting you to 11 patent cases that you should look out for during the second half of 2024. This judicial mix touches on a range of industries and interests, such as...more

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