In a recent newsflash, we discussed the USPTO’s withdrawal of its 2022 memorandum that detailed how the PTAB would exercise its discretion to deny petitions for inter partes review and post-grant review. New guidance from the...more
On February 28, 2025, the USPTO announced that it was rescinding former Director Vidal’s 2022 memorandum on discretionary denials by the Patent Trial and Appeal Board. The 2022 memorandum effectively narrowed the application...more
The USPTO recently issued new guidance on how the Patent Trial and Appeal Board (PTAB) will apply Apple Inc. v. Fintiv Inc., a 2020 precedential decision which laid out considerations for denying institution of a post-grant...more
The Patent Trial and Appeal Board has denied institution of a post-grant review proceeding because the petitioner failed to show the challenged patent was eligible for PGR. The PTAB ruled that the petitioner’s evidence,...more
More than a year after its last precedential designation, the Precedential Opinion Panel (POP) of the Patent Trial and Appeal Board has held that Fedwire confirmation of payment constitutes sufficient evidence that the...more
The PTAB recently denied a motion to correct clerical mistakes under 37 C.F.R. § 42.104(c) because the corrections presented substantive new evidence that would have had a substantial impact on the proceedings and prejudiced...more
A district court has denied a patent owner’s motion to strike wholesale a defendant’s affirmative defense of invalidity. The key issue in the motion to strike was the application of the estoppel provision of 35 U.S.C. §...more
11/13/2019
/ Affirmative Defenses ,
Estoppel ,
Evidence ,
Final Written Decisions ,
FRCP 12(f) ,
Inter Partes Review (IPR) Proceeding ,
Motion To Strike ,
Patent Infringement ,
Patent Invalidity ,
Patent Litigation ,
Patent-Eligible Subject Matter ,
Patents ,
Pleadings ,
Post-Grant Review ,
Prior Art ,
Question of Fact ,
Section 101
A magistrate judge determined that a prevailing party in a district court litigation could be entitled to an award of attorneys’ fees based solely on conduct during an inter partes review (IPR) proceeding.
In September...more
The Patent Trial and Appeal Board (PTAB) has denied a petitioner’s request for inter partes review (IPR) finding that petitioner failed to demonstrate a reasonable likelihood of prevailing with respect to at least one...more
On September 2, 2016, the U.S. Patent Trial and Appeal Board (PTAB) ruled that U.S. Patent No. 9,157,017 (the “’017 patent”) was eligible for post-grant review (PGR) even though, on its face, the patent claims priority to a...more