Posts in USPTO

We have written before about the Patent Trial and Appeal Board’s (PTAB’s) 70% all-claims invalidation rate. That article explained (using numbers from the PTAB statistics page) that when a patent is subjected to an IPR, the all-claims invalidation rate is 70%. The all-claims invalidation rate is the rate at which the PTAB finds all challenged claims invalid (unpatentable), effectively killing off the patent. The all-claims invalidation rate is not just high; it has also varied considerably over the years, which raises additional concerns.

At first glance, certain comments by U.S. Patent and Trademark Office (USPTO) Director nominee John Squires during his Senate Judiciary Committee confirmation hearing raised questions about whether he sees the Patent Trial and Appeal Board (PTAB) in the same way as Acting Director Coke Morgan Stewart. But on closer examination, and when viewed in context, Squires’s comments could reflect alignment not only with Acting Director Stewart, but with Congress’s objective when it passed the Leahy-Smith America Invents Act (AIA) — that patent quality be vetted as early as possible, during or shortly after examination, and that later, back-end challenges only be available in limited circumstances.

On Monday, the U.S. Court of Appeals for the Federal Circuit (CAFC) issued a precedential ruling in Eye Therapies, LLC v. Slayback Pharma, LLC, vacating an obviousness ruling by the Patent Trial and Appeal Board (PTAB) that invalidated Eye Therapies’ patent claims to methods of treating eye redness. Reviewing the relevant patent prosecution history at the U.S. Patent and Trademark Office (USPTO), the Federal Circuit found that the Board’s validity ruling was ultimately infected by an erroneous construction of the transitional phrase “consisting essentially of” in light of intrinsic evidence supporting a narrow interpretation for that disputed claim term.

The U.S. Supreme Court today took the advice of the Solicitor General in granting a petition for certiorari brought by Cox Communications and denying one brought by Sony in the same matter. Music publishers including Sony, Arista Records, Warner Music and Universal Music Group filed copyright claims against Cox in July 2018, alleging that Cox was liable for the infringement of 10,017 musical works that were illegally distributed by the ISP’s subscribers. A 2020 jury verdict found Cox liable for both vicarious and contributory infringement, leading to a $1 billion damages verdict against Cox after damages were increased for the jury’s willfulness finding.

As John Squires heads out of committee and toward full Senate confirmation to become the next Director of the U.S. Patent and Trademark Office (USPTO), there are a few things he could do at the outset to make an immediate impact. Top of the list would be re-instituting an after-final consideration program similar to the After-Final Consideration Pilot Program 2.0 that was eliminated by former Director Kathi Vidal. This would lower the cost of getting a patent when allowance is close.

The Patent Trial and Appeal Board (PTAB) on Thursday designated as informative a Director Review decision in which Acting Director Coke Morgan Stewart said the Board abused its discretion by instituting two petitions for inter partes review (IPR) challenging the same claims. According to the U.S. Patent and Trademark Office (USPTO), informative decisions provide the Board “norms on recurring issues, guidance on issues of first impression to the Board, guidance on Board rules and practices, and guidance on issues that may develop through analysis of recurring issues in many cases .”

In a Director Discretionary Denial decision issued today by Acting Director of the U.S. Patent and Trademark Office (USPTO) Coke Morgan Stewart, Procomm International PTE Ltd.’s request to discretionarily deny three petitions for inter partes review (IPR) brought by Ericsson and Verizon Wireless was granted, in part because one of the patents at issue was dismissed from the parallel litigation.

Every experienced patent attorney knows what is written below is true, but if you want the quiet parts to be spoken loudly, keep reading. This article isn’t revolutionary, but it screams a truth that everyone with an interest in patents needs to understand. Patent invalidation rates by the Patent Trial and Appeal Board (PTAB) are often used to attack the quality of examination by the U.S. Patent and Trademark Office (USPTO). While I agree that there is room for improvement in examination quality, patent invalidation rates should not be used as a barometer for how well the USPTO is examining patent applications.

Earlier today the United States filed a Statement of Interest in Radian Memory Systems, LLC v. Samsung Electronics Co. (Civil Action No. 2:24-cv-1073), a patent infringement matter in the United States District Court for the Eastern District of Texas, Marshall Division. The filing was made by attorneys from both the U.S. Department of Justice, Antitrust Division, and the United States Patent & Trademark Office (USPTO), and suggests that the court should find the existence of irreparable harm to be in favor of the patent owner. Ultimately, the government argument boils down to this: Patent infringement in many cases causes irreparable harm to the patent owner, and monetary damages are extremely difficult to calculate and, therefore, monetary damages are insufficient.

In the latest Director Discretionary Denial decision, Acting U.S. Patent and Trademark Office (USPTO) Director Coke Morgan Stewart granted AXA Power’s request for discretionary denial based on “settled expectations” of the patent owner—a doctrine that is shaping up to be a key factor in Stewart’s interim discretionary denial process.

On Wednesday, June 18, the U.S. Court of Appeals for the Federal Circuit (CAFC) issued an opinion affirming in part and vacating in part the Patent Trial and Appeal Board’s (PTAB) decision regarding Avago Technologies’ U.S. Patent No. 8,646,014. The patent, titled “Multistream Video Communication With Staggered Access Points,” addresses methods for reducing latency in video streaming systems. Specifically, it enables a video receiver to select from multiple streams the one expected to minimize latency, defined as the delay from a user’s request for content to its playback.

The U.S. Patent and Trademark Office (USPTO) today held a “USPTO Hour” webinar in which it shared the results thus far of its 2022 pilot program, the “Deferred Subject Matter Eligibility Response (DSMER) Pilot.” The DSMER Pilot was announced in January 2022 in response to a 2021 letter sent to the Office by Senators Thom Tillis (R-NC) and Tom Cotton (R-AR) asking then-interim Director Drew Hirshfeld to “initiate a pilot program directing examiners to apply a sequenced approach to patent examination,” rather than the traditional “compact approach.”

Following the release of 11 Director Review decisions on discretionary denial on Thursday, June 12, Acting Director Coke Morgan Stewart issued two additional decisions late Friday, both of which denied the requests for discretionary denial. The total tally of decisions under this new process is now at 18, and factors such as timing of parallel proceedings, early challenges to patents and “settled expectations” of the patent owner are shaping up to be key considerations. 

The recent decision in iRhythm Technologies v. Welch Allyn Inc., IPR2025-00377, et al. (Director Review: June 6, 2025) establishes a new and independent basis for discretionary denial: petitioner’s prior knowledge of the patent coupled with a failure to seek earlier review. This is the first decision explaining how the “settled expectations” consideration can be applied to grant discretionary denial.

The USPTO receiving authority by the Trump Administration to hire was no easy lift. IPWatchdog has learned that the USPTO has been tirelessly working with the U.S. Office of Personnel Management (OPM) for 4+ months in an effort to convince OPM to give the USPTO a waiver that would allow the Office to once again start hiring examiners.