News & Analysis as of

Patent Trial and Appeal Board Intellectual Property Litigation Post-Grant Review

Jones Day

PTAB Announces a Bifurcated Process for Consideration of IPR and PGR Petitions

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A new interim process for the acting director to exercise discretion as to whether to institute an inter partes review ("IPR") or a post-grant review ("PGR") was announced on March 26, 2025, in which discretionary...more

McDermott Will & Emery

Fintiv Guidelines for Post-Grant Proceedings Involving Parallel District Court Litigation

On March 24, 2025, the US Patent & Trademark Office (PTO) released new guidance that clarifies application of the Fintiv factors when reviewing validity challenges simultaneously asserted at the Patent Trial & Appeal Board...more

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

Does Your Office Post-Grant Strategy Account for the Rise of Serial Challenges Flowing From the PTAB to the CRU?

After eight weeks of shifts in governmental policies, the patent bar is feeling repercussions from all directions. One critical area in flux is the post-grant challenge arena. With a reduced PTAB head count and a steady...more

Warner Norcross + Judd

It’s Confirmed: Discretionary Denials Will Likely be on the Rise Following USPTO’s New Guidance Following Withdrawal of Fintiv...

Following the U.S. Patent and Trademark Office’s (USPTO’s) decision to rescind the Fintiv Memo on Feb. 28, 2025, the result was that the Patent Trial and Appeal Board (PTAB) would have greater flexibility in exercising its...more

Proskauer - The Patent Playbook

Further Shifts in Patent Office Guidance for Discretionary Denials Signal Uphill Battles for Patent Challengers

On the heels of the rescission of the Fintiv guidance memorandum, the U.S. Patent and Trademark Office has again reshaped the PTAB’s approach to discretionary denials. On March 26, 2025, the Acting Director issued a new...more

Vorys, Sater, Seymour and Pease LLP

New USPTO Processes Put in Place Regarding PTAB Institution Decisions

On March 26, 2025, the U.S. Patent and Trademark Office (USPTO) announced new interim procedures for handling discretionary denials of post-grant proceedings before the Patent Trial and Appeal Board (PTAB).  These changes are...more

WilmerHale

USPTO Issues Memo on Interim Process for PTAB Discretionary Denial Evaluation

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On March 26, 2025, Acting Under Secretary of Commerce for Intellectual Property and Acting Director of the United States Patent and Trademark Office Coke Morgan Stewart issued a memorandum that makes several significant...more

Kilpatrick

Pre-Institution Overhaul: Unpacking the PTAB’s New Briefing Procedures

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Hot on the heels of rescinding former Director Vidal’s June 2022 memo providing guidance on discretionary denials, Acting Director of the USPTO, Coke Morgan Stewart, issued a memo yesterday outlining new “Interim Processes...more

Womble Bond Dickinson

Design Patent Obviousness

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The landscape of design patent law has recently evolved with the introduction of a new standard for determining obviousness. For decades, the Rosen-Durling test was used to assess obviousness of design patents....more

McDermott Will & Emery

PTO Reverts to Prior Post-Grant Guidelines for Cases Involving Parallel District Court Litigation

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On February 28, 2025, the acting director of the US Patent & Trademark Office (PTO) announced that the agency will revert to previous guidelines for discretionary denials of petitions for post-grant proceedings where there is...more

Akin Gump Strauss Hauer & Feld LLP

USPTO Withdraws Fintiv Memo on Discretionary Denials in Post-Grant Proceedings

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

Warner Norcross + Judd

Discretionary Denials May be on the Rise Following PTAB’s Decision to Withdraw Fintiv Memo

On Feb. 28, 2025, the U.S. Patent and Trademark Office (USPTO) rescinded a memorandum issued by former Director Kathy Vidal (the “Fintiv Memo”), which, since June 21, 2022, provided guidance on when the Patent Trial and...more

Fenwick & West LLP

USPTO Rescinds 2022 Memorandum on Discretionary Denials of Post-Grant Proceedings

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On February 28, 2025, the United States Patent and Trademark Office (USPTO) rescinded a June 2022 memorandum clarifying when the Patent Trial and Appeal Board (PTAB) can issue discretionary denials of post-grant patent...more

Fish & Richardson

USPTO Rescinds 2022 Guidance on Discretionary Denials

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On February 28, 2025, the United States Patent and Trademark Office announced that it has rescinded the June 21, 2022, memorandum about discretionary denials in Patent Trial and Appeal Board (PTAB) post-grant proceedings with...more

Erise IP

Eye on IPRs, May 2024: Lululemon Earns Partial IPR Win Against Nike; USPTO Issues Proposed IPR Rules

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Every month, Erise’s patent attorneys review the latest inter partes review cases and news to bring you the stories that you should know about: PTAB issues initial decisions on Lululemon-Nike IPRs - Lululemon, whose...more

Wolf, Greenfield & Sacks, P.C.

[Webinar] Mid-Year Litigation and PTAB Review - June 26th, 9:00 pm - 10:00 pm ET

Join Wolf Greenfield for a mid-year review of litigation and PTAB trends at 12:00pm ET or 9:00pm ET. This webinar will cover: 2024/2025 patent litigation trends: ITC domestic industry, double patenting, forum shopping,...more

Wolf, Greenfield & Sacks, P.C.

[Webinar] Mid-Year Litigation and PTAB Review - June 26th, 12:00 pm - 1:00 pm ET

Join Wolf Greenfield for a mid-year review of litigation and PTAB trends at 12:00pm ET or 9:00pm ET. This webinar will cover: 2024/2025 patent litigation trends: ITC domestic industry, double patenting, forum shopping,...more

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

IP Hot Topic: USPTO Publishes Long-awaited Notice of Proposed Rulemaking with Updates to PTAB Practice and Procedure

On April 19, 2024, the USPTO published a long-awaited Notice of Proposed Rulemaking (NPRM) that followed its April 2023 Advance Notice of Proposed Rulemaking (ANPRM). The proposed rules package, Patent Trial and Appeal Board...more

Venable LLP

Seagen Requests Director Review of Unpatentability Decision in Adcetris® Patent PGR

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On February 14, 2024, Seagen requested director review of the PTAB’s January 16th Final Written Decision (“FWD”) in PGR2021-00030 finding antibody-drug conjugate claims in U.S. Patent No. 10,808,039 (the “’039 patent”)...more

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

2023 PTAB Year in Review: Editors’ Introduction

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

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

2023 PTAB Year in Review: Analysis & Trends

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

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

Federal Circuit IP Appeals: Summaries of Key 2023 Decisions (8th Edition)

2023 saw a return to business as usual for the Federal Circuit. Oral arguments are once again in-person and open to the public, and the Court has resumed its former practice of holding occasional sittings outside of...more

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

Federal Circuit IP Appeals: Summaries of Key 2023 Decisions (8th Edition): In re Cellect, LLC, 81 F.4th 1216 (Fed. Cir. 2023)...

Cellect owned four patents with claims that were found unpatentable by the PTAB in ex parte reexaminations for obviousness-type double patenting. The patents were granted Patent Term Adjustment (“PTA”) for the Office’s delay...more

Venable LLP

[Ongoing Program] Life Sciences Series - IPRs, PGRs, and the BPCIA - October 17th, 1:00 pm - 2:00 pm ET

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We are excited to announce Venable’s inaugural Life Sciences Webinar Series. This month-long series will explore the intricacies and latest developments that shape the life sciences industry. Join us as we hear from our...more

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

[Webinar] 2022 PTAB Year in Review: Analysis and Trends - February 28th, 1:00 pm - 2:00 pm EST

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

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