USPTO, Evidence | JD Supra

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

King & Spalding on 8/18/2025

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

Best Practices for Diligencing Chain-of-Title for Post-AIA Patent Applications with Assignee-Applicants

Ropes & Gray LLP on 8/15/2025

Patent diligence in the context of M&A and other types of commercial transactions typically involves confirmation of a patent’s chain-of-title ownership, from initial inventors through to the current assignee-owner. The...more

Intellectual Property Litigation Newsletter | August 2025

Alston & Bird on 8/13/2025

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

July USPTO Guidance Sets Stricter Standards for Evidence in IPR Petitions

Rothwell, Figg, Ernst & Manbeck, P.C. on 8/8/2025

Acting Director of the USPTO, Coke Morgan Stewart, issued a memorandum last week that will change the way petitioners levy challenges to patents via inter partes review (IPR). The change will apply to any petition for IPR...more

What Should the USPTO Consider Changing for Implementing Post-Final Written Decision Estoppel in Ex Parte Reexamination Based on...

Sterne, Kessler, Goldstein & Fox P.L.L.C. on 7/30/2025

The estoppel provision of 35 U.S.C. § 315(e)(1) had largely prevented requesters from challenging claims of a patent via ex parte reexamination after an inter partes review (IPR) that resulted in a final written decision...more

Inventor Testimony of Reduction Date Leads to Denial

Jones Day on 7/28/2025

The Patent Trial and Appeal Board (PTAB) denied institution of an inter partes review (IPR) brought by Par-Kan Company, LLC against Unverferth Manufacturing Company regarding U.S. Patent No. 8,967,940 (“the ‘940 patent”). ...more

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

Seyfarth Shaw LLP on 7/2/2025

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

Trademark Applications Filed on an Intent-To-Use Basis Can Be Vulnerable To Challenge

Farella Braun + Martel LLP on 5/15/2025

In filing to register a trademark on an “intent-to-use” basis, the applicant must verify that it has a good faith “bona fide intention to use the mark in commerce.” 15 U.S.C. § 1051(b). Assuming there is nothing on the face...more

District Court: Incorporation by Reference for Purposes of Anticipation Requires More than a Parenthetical

Akin Gump Strauss Hauer & Feld LLP on 3/14/2025

In a series of rulings on a motion in limine, the District of Delaware recently distinguished between what qualifies as being incorporated by reference and what does not for the purposes of an anticipation defense. In short,...more

Petitioner’s Proof of Printed Publication Falls Short

Jones Day on 3/13/2025

On February 6, 2025, the PTAB denied IPR institution because the Petitioner failed to establish that its key prior art reference qualified as a printed publication under Section 102(b). The PTAB’s decision hinged on whether...more

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

Kilpatrick on 1/28/2025

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

USPTO Director’s Decision Highlights Consequences of Evidence Suppression

DLA Piper on 9/23/2024

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

Director Kathi Vidal's Sanctions Decisions Serve as a Strong Deterrent

Fenwick & West LLP on 8/19/2024

United States Patent and Trademark Office Director Kathi Vidal's recent sanctions decisions have been notable for their seriousness and impact. In each case, Vidal invoked the Director Review process, a measure implemented...more

Federal Circuit Clarifies Standards to Establish Nexus Between Objective Evidence and Non-Obviousness, and to Establish Copying in...

Sheppard Mullin Richter & Hampton LLP on 12/18/2023

In this case, the Federal Circuit determined the sufficiency of evidence to rebut a nexus between objective evidence and non-obviousness; and to establish the objective indicia of copying....more

[Webinar] Developments in IPR Estoppel - December 5th, 1:00 pm - 2:00 pm EST

Sterne, Kessler, Goldstein & Fox P.L.L.C. on 11/30/2023

Director Jason A. Fitzsimmons and Counsel Richard A. Crudo will present the “Developments in IPR Estoppel” webinar on Tuesday, December 5, 2023, at 1:00 PM ET. The possibility of being estopped from asserting prior art in...more

Latest Federal Court Cases - August 2023 #3

Schwabe, Williamson & Wyatt PC on 8/29/2023

Volvo Penta of the Americas, LLC v. Brunswick Corp., Appeal No. 2022-1765 (Fed. Cir. Aug. 24, 2023) In its only precedential patent case of the week, the Federal Circuit held the Patent Trial and Appeal Board erred in...more

Little Weight Given to Expert Declaration That Repeats IPR Petition

McDermott Will & Schulte on 3/3/2023

The US Patent & Trademark Office Director affirmed and designated as precedential a Patent Trial & Appeal Board (Board) decision denying institution of an inter partes review (IPR) petition where the expert declaration...more

Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2022 Decisions

Sterne, Kessler, Goldstein & Fox P.L.L.C. on 2/8/2023

As part of the recovery from the global COVID-19 pandemic, the U.S. Court of Appeals for the Federal Circuit took steps to return to normal operations. It began requiring live oral arguments in August 2022 and, by November,...more

PTAB Strategies and Insights Newsletter: May 2022: Split Panel Weighs General Skepticism Differently in Obviousness Inquiry

Sterne, Kessler, Goldstein & Fox P.L.L.C. on 6/2/2022

In a recent opinion by the Federal Circuit, Auris Health, Inc. v Intuitive Surgical Operations, Inc., Case 2021-1732, the panel split on the weight of general industry skepticism in an obviousness analysis and split on...more

PTAB Strategies and Insights Newsletter: May 2022

Sterne, Kessler, Goldstein & Fox P.L.L.C. on 6/1/2022

The PTAB Strategies and Insights newsletter provides timely updates and insights into how best to handle proceedings at the USPTO. It is designed to increase return on investment for all stakeholders looking at the entire...more

2021 PTAB Year in Review: Analysis & Trends: Evidentiary Issues When Leveraging the Records in Parallel Proceedings Involving the...

Sterne, Kessler, Goldstein & Fox P.L.L.C. on 3/18/2022

Parallel proceedings before the USPTO Patent Trial and Appeal Board (PTAB) are a common feature of district court litigation, and it is common for the factual records to overlap between these tribunals. As a result, questions...more

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