News & Analysis as of

United States Patent and Trademark Office › Patent Trial and Appeal Board › Judicial Discretion

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

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

Jones Day Talks®: Patent Litigation, PTAB, Iancu's Legacy, and Institution Discretion

Jones Day on

Partners Matt Johnson and Sarah Geers talk about former USPTO Director Andrei Iancu's impact on the PTAB, and what we might expect from a new director under the Biden Administration. They also comment on why patent litigation...more

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

PTAB Strategies and Insights - January 2021: Petitioner's District Court Stipulation Results in PTAB Trial Institution Under the...

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

In December 2020, the Patent Trial and Appeal Board’s (“PTAB” or “Board”) designated an opinion as precedential (Sotera Wireless, Inc. v. Masimo Corporation), where the Board instituted trial, i.e., did not exercise its...more

McDermott Will & Schulte

PTAB Designates Two Opinions Precedential and One Opinion Informative, Further Clarifying the Scope of the Board’s Discretion...

McDermott Will & Schulte on

Addressing the scope of the Patent Trial and Appeal Board’s (“Board”) discretion under 35 U.S.C. § 325(d) to deny institution, the Board designated three opinions as precedential or informative. Precedential Opinions: In...more

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

2019 PTAB Year in Review: Analysis & Trends: Petitioners Beware Discretionary Denial

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

In August 2018, the Patent Office foreshadowed that the Board would be expanding the use of its discretion under 35 U.S.C. §§ 314(a)/324(a) and 325(d) to deny petitions. The Office explained that “[t]here may be other reasons...more

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

PTAB Strategies and Insights - February 2020

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

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

Knobbe Martens

Discretionary Denial as a Case Management Tool: PTAB Requires Petitioner to Rank its Six IPR Petitions by Merit and then...

Knobbe Martens on

Following the Supreme Court’s decision in SAS v. Iancu, which held that an IPR institution is an “all-or-nothing” proposition, the PTAB lost its ability to rely on “partial institutions” as a case management tool (e.g., by...more

Bass, Berry & Sims PLC

USPTO Issues Two Precedential Decisions Relating to the PTAB’s Discretion to Deny Institution

Bass, Berry & Sims PLC on

Following the United States Patent and Trademark Office’s (USPTO) recent wave of decisions designated precedential or informative, the USPTO added two more decisions to the list last week: Valve Corp. v. Elec. Scripting...more

Jones Day

PTAB Decision Provides Guidance On Using Art Previously Considered By The Office

Jones Day on

On October 24th, the PTAB designated three decisions related to discretionary petition denials under 35 U.S.C. § 325(d) as informative. Unified Patents, Inc. v. Berman is discussed below. We previously reported on Hospira,...more

Fenwick & West LLP

Intellectual Property Bulletin - Summer 2016

Fenwick & West LLP on

Supreme Court Expands Discretion to Award Enhanced Damages for Patent Infringement and Eliminates the Federal Circuit’s ‘Seagate Test’ - In Halo Electronics, Inc. v. Pulse Electronics, Inc., the U.S. Supreme Court...more

10 Results
 / 
View per page
Page: of 1

"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:
Sign up Log in
*By using the service, you signify your acceptance of JD Supra's Privacy Policy.
- hide
- hide