News & Analysis as of November 24, 2024

Patent Trial and Appeal Board

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The Leahy-Smith America Invents Act is a United States federal statute enacted in 2011 aimed at simplifying the U.S. patent system and allowing inventions to be brough to market sooner. The AIA makes significant changes to the patent system, including changing from a first-to-invent scheme to a first-to-file scheme, eliminating interference proceedings and developing post-grant opposition. less -

Historical Development of Substantial New Question contrasted with the new Section 325(d) Criteria

Sterne, Kessler, Goldstein & Fox P.L.L.C. on 11/7/2024

Ex parte reexamination proceedings have been available for over 40 years. The reexamination statutes, Public Law 96-517 of July 1, 1981 (also known as the Bayh-Dole Act), included 35 U.S.C. § 303, which codified, in part,...more

Patent Poetry: Federal Circuit Upholds IPR Estoppel Provisions

AEON Law on 8/5/2024

The Federal Circuit has affirmed a decision by the Patent Trial and Appeal Board (PTAB or Board) concerning the application of 37 CFR § 42.73(d)(3)(i)’s estoppel provisions in invalidating amended patent claims....more

Patent Trial and Appeal Board Publishes Updated Oral Hearing Guide

Manatt, Phelps & Phillips, LLP on 7/9/2024

The Patent Trial and Appeal Board (Board) has published an updated Oral Hearing Guide to reflect current practice before the Board. The changes include: Remote option for participating in America Invents Act (AIA) trials....more

2023 PTAB Year in Review: Analysis & Trends: Reexamination Statistics and the Federal Circuit’s SNQ Clarification/Expansion

Sterne, Kessler, Goldstein & Fox P.L.L.C. on 2/19/2024

The recent resurgence in ex parte reexamination demonstrates the importance of this post-grant review vehicle. It has become particularly important for patent challengers who may be estopped from requesting inter partes...more

2023 PTAB Year in Review: Editors’ Introduction

Sterne, Kessler, Goldstein & Fox P.L.L.C. on 2/12/2024

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

2023 PTAB Year in Review: Analysis & Trends

Sterne, Kessler, Goldstein & Fox P.L.L.C. on 2/12/2024

This Year in Review synthesizes key events and decisions from 2023 into a digestible guide that we hope will serve as a helpful reference for those who practice before, or adjacent to, the PTAB. As in the past, many of our...more

The Presumption of Validity Is Dead; Long Live the Presumption of Validity?

Manatt, Phelps & Phillips, LLP on 10/12/2023

Executive Summary - The patent application examination requirement is statutory based rather than a Constitutional requirement. For instance, from 1793 to 1836, the U.S. Patent System operated on a registration system...more

Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2022 Decisions

Sterne, Kessler, Goldstein & Fox P.L.L.C. on 2/8/2023

As part of the recovery from the global COVID-19 pandemic, the U.S. Court of Appeals for the Federal Circuit took steps to return to normal operations. It began requiring live oral arguments in August 2022 and, by November,...more

2021 PTAB Year in Review: Analysis & Trends: The Resurgence and Perils of Ex Parte Reexaminations

Sterne, Kessler, Goldstein & Fox P.L.L.C. on 3/23/2022

Ex parte reexaminations have re-emerged as an increasingly important component of patent litigation and licensing negotiations. With the passage of the America Invents Act (“AIA”) and the advent of inter partes reviews...more

2021 PTAB Year in Review: Analysis & Trends: Case Studies and Trends at the PTAB Involving 35 U.S.C. § 112

Sterne, Kessler, Goldstein & Fox P.L.L.C. on 3/15/2022

Over the last 20-plus years, US Court of Appeals for the Federal Circuit cases concerning written description and enablement have become a hot-button issue in the chemical and life sciences practices. The year 2021 was no...more

2021 PTAB Year in Review: Analysis & Trends: Discretionary Denial under § 325(d): Strategic Implications of the PTAB’s Advanced...

Sterne, Kessler, Goldstein & Fox P.L.L.C. on 3/11/2022

The USPTO Patent Trial and Appeal Board (PTAB) has increasingly used its discretionary denial authority in recent years. Although the PTAB’s discretion under 35 U.S.C. § 314(a) and Fintiv grabbed many headlines in 2021, the...more

2021 PTAB Year in Review: Analysis & Trends: Data & Trends

Sterne, Kessler, Goldstein & Fox P.L.L.C. on 3/9/2022

SEPs: Not as Strong as they Seem?...more

2021 PTAB Year in Review: Analysis & Trends: Editors' Introduction

Sterne, Kessler, Goldstein & Fox P.L.L.C. on 3/8/2022

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

2021 PTAB Year in Review: Analysis & Trends

Sterne, Kessler, Goldstein & Fox P.L.L.C. on 3/7/2022

[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

NHK-Fintiv Frustration: Status of the Current Challenges and the Uncertain Fate of the PTAB’s Discretionary Denial of IPRs

Haug Partners LLP on 2/18/2022

Several challenges have been made recently to the Patent Trial and Appeal Board’s (“PTAB’s or Board’s”) controversial practice of denying inter partes review (IPR) petitions based on the status of parallel infringement...more

Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2021 Decisions

Sterne, Kessler, Goldstein & Fox P.L.L.C. on 2/9/2022

[co-author: Jamie Dohopolski] Last year, the continued global COVID-19 pandemic forced American courts to largely continue the procedures set in place in 2020. The U.S. Court of Appeals for the Federal Circuit was no...more

Ex Parte Reexamination Not Allowed After Failed IPR Challenge

McDermott Will & Emery on 10/14/2021

The US Court of Appeals for the Federal Circuit found that ex parte reexamination was unavailable to a challenger who repeatedly tried and failed to raise the same arguments for the same patent in a prior inter partes review...more

PTAB’s Motion to Amend Pilot Program: Review of Initial Results

Foley & Lardner LLP on 8/20/2020

Since the inception of inter partes reviews (IPRs) and post grant reviews (PGRs) under the America Invents Act, the option for a patent owner to file a motion to amend its claims was always present, but motions to amend were...more

Can Patent Claims be Cancelled Based on Indefiniteness by the PTAB during an IPR?

International Lawyers Network on 6/3/2020

For the Patent and Trail Appeal Board (“PTAB”), the PTAB allows a petition for inter parties review (“IPR”) to request cancellation of claims in a U.S. patent. For an inter parties review of a patent, the PTAB institutes...more

Potential Changes to PTAB Practice on Multiple IPR Petitions

WilmerHale on 11/27/2019

An important set of factors the Patent Trial and Appeal Board considers when deciding whether to institute inter partes review concerns the filing of multiple petitions challenging the same patent. Part I of this two-part...more

PTAB Strategies and Insights - June 2019: Supreme Court Eliminates Government as a Party Who Can File AIA Action at PTAB

Sterne, Kessler, Goldstein & Fox P.L.L.C. on 6/24/2019

In Return Mail, Inc. v. U.S. Postal Serv., 17-1594, Justice SOTOMAYOR wrote for the majority to overturn a Federal Circuit decision that the U.S. Postal Service had standing to petition for covered business method review. The...more

Federal Agencies May Not Challenge Patents in AIA Post-Issuance Proceedings

Jones Day on 6/18/2019

The Supreme Court ruled in Return Mail that a federal agency is not a "person" who may challenge an issued patent in inter partes review, post-grant review, or CBM review under the AIA. In its 6–3 decision in Return Mail,...more

Return Mail v. Postal Service: The Supreme Court Rules the Federal Government May Not Petition for Institution of Post-Issuance...

Faegre Drinker Biddle & Reath LLP on 6/18/2019

In a 6-3 opinion authored by Justice Sotomayor, the Supreme Court held that the Federal Government is not a “person” capable of petitioning the Patent Trial and Appeal Board (“PTAB”) to institute patent review proceedings...more

Supreme Court Holds that Government Agencies May Not Use AIA Proceedings to Challenge Patents

Williams Mullen on 6/18/2019

On June 10, 2019 the United States Supreme Court held in Return Mail, Inc. v. United States Postal Service, 587 U.S. ____ (2019) that agencies of the federal government cannot challenge the validity of a patent via USPTO...more

High Court Says Federal Agencies Cannot Seek AIA Patent Challenges

Bradley Arant Boult Cummings LLP on 6/14/2019

Earlier this week, the United States Supreme Court reversed the Federal Circuit’s finding that the government is a “person” eligible to petition for post-issuance AIA review proceedings. This 6-3 decision, Return Mail, Inc....more

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