On March 26, 2025, the USPTO issued the attached memo titled “Interim Processes for PTAB Workload Management,” which significantly alters the pre-institution briefing procedure for IPRs and PGRs.
Under the Interim Process,...more
On March 24, 2025, Chief Administrative Patent Judge Scott R. Boalick issued a memo directed to the members of the Patent Trial and Appeal Board (PTAB) explaining why the USPTO’s June 2022 Fintiv memo was rescinded and how...more
On Friday, the USPTO rescinded its June 21, 2022, memorandum entitled “Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation” (“Fintiv memo”). The USPTO notice makes...more
3/3/2025
/ America Invents Act ,
Appeals ,
Intellectual Property Litigation ,
Intellectual Property Protection ,
Inter Partes Review (IPR) Proceeding ,
International Trade Commission (ITC) ,
Parallel Proceedings ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
USPTO
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
2/4/2025
/ §315(e) ,
Administrative Procedure Act ,
America Invents Act ,
Appeals ,
Corporate Counsel ,
Director of the USPTO ,
Final Rules ,
Intellectual Property Litigation ,
Intellectual Property Protection ,
Inter Partes Review (IPR) Proceeding ,
Obviousness ,
Patent Litigation ,
Patent Ownership ,
Patent Trial and Appeal Board ,
Patents ,
Prior Art ,
Rulemaking Process ,
Section 102 ,
Statistical Analysis ,
Statutory Interpretation ,
Technology ,
USPTO
Please see Charts below for more information....more
In 2023, Fintiv—the precedential Order issued in 2020 that established a six-factor framework that the Patent Trial and Appeal Board (PTAB) applies when evaluating whether to exercise its discretion to institute an America...more
On July 24, 2023, the United States Patent and Trademark Office (USPTO or Office) promulgated a revised interim process for Director Review of Patent Trial and Appeal Board (PTAB or Board) decisions in proceedings under the...more
2/13/2024
/ Advisory Committee ,
America Invents Act ,
Appeals ,
Director of the USPTO ,
Intellectual Property Litigation ,
Intellectual Property Protection ,
Patent Trial and Appeal Board ,
Policies and Procedures ,
PTAB Precedential Opinion Panel (POP) ,
Regulatory Agenda ,
USPTO
A review of 2023 reveals it was an active and impactful year in shaping the policy and practice before the Patent Trial and Appeal Board (PTAB or Board) at the U.S. Patent and Trademark Office (USPTO). In fact, all three...more
2/12/2024
/ America Invents Act ,
Director of the USPTO ,
Estoppel ,
Ex Partes Reexamination ,
Final Written Decisions ,
Intellectual Property Litigation ,
Intellectual Property Protection ,
Inter Partes Review (IPR) Proceeding ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Post-Grant Review ,
Standard Essential Patents ,
USPTO
In our PTAB Spotlight Series, attorneys will share their valuable insights on PTAB practice today, the challenges and opportunities clients face, and the trends practitioners should follow....more
11/20/2023
/ Administrative Patent Judges ,
Administrative Procedure Act ,
Advanced Notice of Proposed Rulemaking (ANPRM) ,
Interviews ,
Patent Attorneys ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Professional Networking ,
PTAB Precedential Opinion Panel (POP) ,
Standard Operating Procedures
Speakers will offer updates, case summaries, and analysis of the significant 2022 PTAB guidance, actions, and rulings. Topics include: the Director’s 2022 Fintiv guidance, PTAB discretionary denial, the use of applicant...more
2/20/2023
/ Continuing Legal Education ,
Estoppel ,
Final Written Decisions ,
Intellectual Property Litigation ,
Intellectual Property Protection ,
Inter Partes Review (IPR) Proceeding ,
Patent Applications ,
Patent Infringement ,
Patent Invalidity ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Post-Grant Review ,
Prior Art ,
Webinars
Sterne, Kessler, Goldstein & Fox invites you to the webinar, "PTAB Analysis, Trends, and Forecast: Fintiv and Discretionary Denials," on Monday, March 21, 2022, from 1:00 to 2:00 PM (EDT).
In conjunction with the release...more
3/15/2022
/ Continuing Legal Education ,
Ex Partes Reexamination ,
Intellectual Property Protection ,
Inter Partes Review (IPR) Proceeding ,
Patent Applications ,
Patent Infringement ,
Patent Litigation ,
Patent Prosecution ,
Patent Trial and Appeal Board ,
Patents ,
Post-Grant Review ,
Prior Art ,
Section 325(d) ,
Webinars
In 2021, Fintiv continued to be one of the hottest and most controversial issues facing the patent bar. The USPTO Patent Trial and Appeal Board’s (PTAB) precedential Fintiv decision enumerated factors that the PTAB applies...more
3/10/2022
/ America Invents Act ,
Inter Partes Review (IPR) Proceeding ,
International Trade Commission (ITC) ,
Parallel Proceedings ,
Patent Applications ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Post-Grant Review ,
Prior Art ,
USPTO
Love it or hate it, ignore the USPTO Patent Trial and Appeal Board (PTAB) at your peril. The introduction of the PTAB as part of the America Invents Act over ten years ago has forever changed patent litigation. In its first...more
3/8/2022
/ America Invents Act ,
Biologics ,
Claim Construction ,
Constitutional Challenges ,
Estoppel ,
Evidence ,
Ex Partes Reexamination ,
Expert Testimony ,
Final Written Decisions ,
Inter Partes Review (IPR) Proceeding ,
Motion to Amend ,
Obviousness ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Prior Art ,
Section 112 ,
Section 325(d) ,
Standard Essential Patents ,
USPTO
[co-author: Jamie Dohopolski]
Love it or hate it, ignore the USPTO Patent Trial and Appeal Board (PTAB) at your peril. The introduction of the PTAB as part of the America Invents Act over ten years ago has forever changed...more
3/7/2022
/ §315(e) ,
35 U.S.C. § 285 ,
America Invents Act ,
Attorney's Fees ,
Biologics ,
Biosimilars ,
Biotechnology ,
Chemical Compounds ,
Claim Construction ,
Collateral Estoppel ,
Constitutional Challenges ,
Corporate Counsel ,
Credibility ,
Declaration ,
Depositions ,
Enhanced Damages ,
Estoppel ,
Evidence ,
Ex Partes Reexamination ,
Exceptional Case ,
Expert Testimony ,
Expert Witness ,
Final Written Decisions ,
Hatch-Waxman ,
Injunctive Relief ,
Intellectual Property Litigation ,
Intellectual Property Protection ,
Inter Partes Review (IPR) Proceeding ,
International Trade Commission (ITC) ,
Inventors ,
Life Sciences ,
Motion to Amend ,
Obviousness ,
Orange Book ,
Parallel Proceedings ,
Patent Applications ,
Patent Cancellation ,
Patent Infringement ,
Patent Invalidity ,
Patent Litigation ,
Patent Prosecution History ,
Patent Trial and Appeal Board ,
Patents ,
Pharmaceutical Patents ,
Post-Grant Review ,
Pre-AIA Patents ,
Printed Publications ,
Prior Art ,
Section 112 ,
Section 325(d) ,
Standard Essential Patents ,
Testimony ,
USPTO ,
USPTO Pilot Program ,
Vacated ,
Written Descriptions
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
3/10/2020
/ America Invents Act ,
Denial of Institution ,
Follow-On Patent Petitions ,
General Plastic Factors ,
Inter Partes Review (IPR) Proceeding ,
International Trade Commission (ITC) ,
Judicial Discretion ,
Parallel Proceedings ,
Partial Institution ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Precedential Opinion ,
SAS Institute Inc. v Iancu ,
Trial Practice Guidance ,
USPTO
Powerful. Resilient. Ever-evolving. These characteristics of the Patent Trial and Appeal Board (PTAB) were on full display in 2019. This past year the PTAB received more than 1,300 inter partes review (IPR), post grant review...more
3/5/2020
/ Claim Construction ,
Concurrent Litigation ,
Constitutional Challenges ,
Corporate Counsel ,
Covered Business Method Proceedings ,
Design Patent ,
Estoppel ,
Evidentiary Standards ,
Inter Partes Review (IPR) Proceeding ,
Motion to Amend ,
Motion To Stay ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Post-Grant Review ,
Trial Practice Guidance
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
3/3/2020
/ Administrative Patent Judges ,
America Invents Act ,
Estoppel ,
Follow-On Patent Petitions ,
Inter Partes Review (IPR) Proceeding ,
Judicial Discretion ,
Litigation Strategies ,
Motion to Amend ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
USPTO
Federal Circuit Sheds Some Light on How SAS May Impact Pending Appeals from the PTAB — Court Terminates Appeals of Partially-Instituted IPRs and Remands Back to the PTAB to Consider Non-Instituted “Claims and Grounds” in...more
6/4/2018
/ Appeals ,
Dismissals ,
Estoppel ,
Final Written Decisions ,
Inter Partes Review (IPR) Proceeding ,
Partial Institution ,
Patent Trial and Appeal Board ,
Patents ,
Remand ,
SAS Institute Inc. v Iancu ,
Waivers
On April 30, 2018, the Patent Trial and Appeal Board (PTAB) held a “Chat with the Chief” webinar to discuss the impact of SAS Institute Inc. v. Matal, 16-969 (Apr. 24, 2018). The webinar was widely attended, drawing about 700...more
On April 26, 2018, the Patent Office issued initial guidance on the impact of the Supreme Court’s recent decision in SAS Institute Inc. v. Matal, 16-969 (Apr. 24, 2018). Two days earlier, the Supreme Court in SAS struck down...more
The Federal Circuit recently held in Nestlé II that it, and by implication the PTAB, should not relitigate claim construction even for indirectly related patents having different specifications....more
The PTAB Strategies and Insights newsletter is designed to increase return on investment for all stakeholders looking at the entire patent life cycle in a global portfolio.
This month we tackle three important...more