News & Analysis as of

United States Patent and Trademark Office Inter Partes Review (IPR) Proceeding Patent Litigation

The U.S. Patent and Trademark Office is an agency of the United States Department of Commerce that serves a fundamental role in the U.S. intellectual property system by issuing patents and registering trademarks.... more +
The U.S. Patent and Trademark Office is an agency of the United States Department of Commerce that serves a fundamental role in the U.S. intellectual property system by issuing patents and registering trademarks.    less -
Jones Day

All Grounds Must Be Addressed in Final Written Decision

Jones Day on

On July 29, 2025, Chief Administrative Patent Judge Scott R. Boalick circulated a memorandum to Members of the PTAB entitled “Final Written Decision Procedures for AIA Trial Proceedings.” ...more

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

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

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

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

Fenwick & West LLP

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

Fenwick & West LLP on

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

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

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

IPR Discretionary Denial Rates at the PTAB: The New Normal

Inter partes review (IPR) proceedings are a cost-effective way by which patent challengers can dispute the validity of an issued patent. To institute an IPR, the Patent Trial and Appeal Board (PTAB) must determine that the...more

McDonnell Boehnen Hulbert & Berghoff LLP

American Science and Engineering, Inc. v. Stewart (Fed. Cir. 2025)

Under Dickinson v. Zurko courts (specifically, the Federal Circuit) should defer to factual determinations by administrative agencies like the U.S. Patent and Trademark Office unless they are not supported by substantial...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

Akin Gump Strauss Hauer & Feld LLP

USPTO Director: Board Abused Discretion by Instituting Two IPRs on Same Patent Based on Competing Claim Constructions

In a recent decision designated as Informative, the USPTO Director determined that the Patent Trial and Appeal Board abused its discretion by instituting two inter partes review proceedings challenging the same patent, based...more

WilmerHale

PTAB/USPTO Update - August 2025

WilmerHale on

On July 31, 2025, Acting Under Secretary of Commerce for Intellectual Property and Director of the USPTO Coke Morgan Stewart issued a memorandum indicating that the USPTO “will enforce and no longer waive the requirement of...more

Patterson Belknap Webb & Tyler LLP

Out With the Old, in With the New: Judge Ramos Grants Leave to Assert New Patents After the Original Patents-in-Suit Were Found...

On July 29, 2025, Judge Edgardo Ramos (S.D.N.Y.) granted plaintiff Kannuu Pty, Ltd. (“Kannuu”) leave to amend its complaint to allege infringement of two newly-issued patents, after the U.S. Patent and Trademark Office...more

Baker Botts L.L.P.

Intellectual Property Report August 2025

Baker Botts L.L.P. on

Key Takeaway: When facing a patent infringement suit, accused infringers traditionally turned to inter partes review (IPR) as a faster, more cost-effective alternative to district court litigation. However, recent guidance...more

Mayer Brown

Reinvigorated Enforcement of Evidentiary Rules and the Permissible Uses of General Knowledge in Inter Partes Review

Mayer Brown on

On July 31, 2025, the Acting Director of the US Patent and Trademark Office (USPTO) issued a significant memorandum that alters the evidentiary landscape for inter partes review (IPR) proceedings before the Patent Trial and...more

Baker Botts L.L.P.

Ex Parte Reexaminations Poised to Make a Quiet Comeback: Discretionary Denial Guidance for Inter Partes Reexamination May Increase...

Baker Botts L.L.P. on

Imagine this. You were just served with a Complaint for patent infringement and learn that, some years ago, your competitor was granted a patent giving them a legal monopoly to exclude others, including you, from making,...more

K&L Gates LLP

USPTO Director Ends IPR Against Midas Green Technologies

K&L Gates LLP on

On 25 July 2025, K&L Gates secured an important win for its client, Midas Green Technologies, LLC. Acting USPTO Director Coke Morgan Stewart granted Director review and denied institution of an inter partes review (IPR)...more

Alston & Bird

Patent Case Summaries | Week Ending July 25, 2025

Alston & Bird on

IGT v. Zynga Inc., No. 2023-2262 (Fed. Cir. (PTAB) July 22, 2025). Opinion by Taranto, joined by Prost and Reyna. IGT owns a patent related to secured virtual networks in gaming environments. After the patent application was...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

Knobbe Martens

Applicant Admitted Prior Art Can (Sometimes) Show Obviousness

Knobbe Martens on

SHOCKWAVE MED., INC., V. CARDIOVASCULAR SYS., INC. - Before Lourie, Dyk, and Cunningham.  Appeal from the United States Patent and Trademark Office, Patent Trial and Appeal Board in No. IPR2019-00405. In inter partes review...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

796 Results
 / 
View per page
Page: of 32

"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