Under 35 U.S.C. § 311(b), a Petitioner may challenge the validity of an issued patent in an IPR proceeding “only on the basis of prior art consisting of patents or printed publications.” Public accessibility has been held to...more
The USPTO published a Notice of Proposed Rulemaking (NPR) on Friday proposing new rules governing pre-issuance internal circulation and review of decisions within the PTAB. 88 Fed. Reg. 69578-69583 (Oct. 6, 2023). The Office...more
PTAB petitioners frequently assert that claims are invalid as obvious over a combination of prior art references. A threshold requirement in any obviousness inquiry is whether the prior art constitutes analogous art. On...more
On April 20, 2023, the USPTO announced Advance Notice of Proposed Rulemaking for potential PTAB reforms. The goal of the Notice was to seek public input regarding proposed changes to discretionary institution practices,...more
Director Vidal issued a new precedential decision yesterday, reversing an adverse judgement order against the patent owner Zipit Wireless, Inc. in Apple v. Zipit Wireless, IPR2021-01124, Paper 14 (PTAB Dec. 21, 2022). In the...more
Institution is Discretionary -
35 USC §§ 314, 324 provide that the Director “may not authorize” a PTAB proceeding “unless” the petition shows that there is a “reasonable likelihood” (for IPR) or that it is “more likely...more