Posts Tagged: "patent office"

In this episode of IPWatchdog Unleashed, I speak with Matt Johnson, Co-Chair of the PTAB Practice at Jones Day, and we take an in-depth look at the Patent Trial and Appeal Board (PTAB) nearly a decade and a half after its launch. Johnson and I discuss the ongoing PTAB reset at the United States Patent and Trademark Office (USPTO) and suggest practical fixes for a better, reengineered PTAB. The majority of the conversation is devoted to concrete, targeted reform suggestions that would lead to a better functioning PTAB and more streamlined IPR review system. Instead of abstract complaints, Johnson proposes narrowing PGR estoppel to encourage early challenges, moving IPR estoppel to the point of institution to eliminate gamesmanship, separating institution decisions from full merits adjudication to reduce confirmation bias, and rethinking quiet-title concepts to better align notice to implementers with settled expectations of patent owners.

The U.S. Court of Appeals for the Federal Circuit (CAFC) on Tuesday affirmed two final written decisions from the Patent Trial and Appeal Board (PTAB) in inter partes review (IPR) proceedings, concluding that the board did not err in finding claims of two Eagle View Technologies, Inc. patents unpatentable as obvious. Eagle View Technologies, Inc. had appealed the PTAB’s decisions, which held that claims of its U.S. Patent Nos. 8,670,961 and 8,078,436 were obvious over a combination of prior art references. The patents, both titled “Aerial Roof Estimation Systems and Methods,” share a common specification and relate to systems and methods that allow estimates involving roofs on buildings to be created remotely. The patents teach remotely generating a roof estimate report by analyzing multiple aerial images of a building to determine the area, shape, and slope of the roof.

Panelists at IPWatchdog’s Virtual PTAB Masters Program 2026 last week had some cynical views on chances for pending patent reform bills, while on Friday other experts offered insights into developments at the U.S. Court of Appeals for the Federal Circuit (CAFC) with respect to review of Patent Trial and Appeal Board (PTAB) cases. Speaking on Thursday’s panel, titled “Capitol Hill & PTAB Politics: Innovation Policy, Congressional Oversight and Mid-term Elections,” panelists first addressed the chances of bills such as the Patent Eligibility Restoration Act (PERA) and the Promoting and Respecting Economically Vital American Innovation Leadership (PREVAIL) Act advancing this year.

U.S. Patent and Trademark Office (USPTO) Deputy Director Coke Morgan Stewart joined IPWatchdog’s Founder and CEO Gene Quinn this morning to kick off the Virtual PTAB Masters Program 2026. Discussing the many procedural changes that have been implemented at the Patent Trial and Appeal Board (PTAB) under first Stewart as Acting Director and then current Director John Squires’, Stewart urged patent owners responding to petitions at the PTAB to tell their stories and petitioners to focus on patents in need of clear “error correction.”

The U.S. Court of Appeals for the Federal Circuit (CAFC) has denied another petition for writ of mandamus seeking to challenge the U.S. Patent and Trademark Office’s (USPTO’s) so-called settled expectations doctrine, which was introduced by then-Acting Director Coke Morgan Stewart. In the present case, Google sought mandamus relief after the USPTO denied its petitions for inter partes review (IPR) of VirtaMove Corp.’s U.S. Patent No. 7,519,814 patent because “the patent[] ha[s] been in force for more than 14 years, creating strong settled expectations.”

The U.S. Court of Appeals for the Federal Circuit (CAFC) on Friday vacated and remanded a final written decision from the Patent Trial and Appeal Board (PTAB) in an inter partes review (IPR) proceeding. The court concluded that the Board erred by requiring petitioner Guardant Health, Inc. to show a motivation to combine steps that were already disclosed in sequence in a single prior art reference.

The U.S. Court of Appeals for the Federal Circuit (CAFC) on Wednesday reversed in part, vacated in part, and remanded a final written decision from the Patent Trial and Appeal Board (PTAB) in an inter partes review (IPR) proceeding filed by Apple, Inc.. The court concluded that the Board was precluded from finding the challenged claims of a patent owned by Smart Mobile Technologies LLC patentable, where a related patent with substantially similar claims had been found unpatentable in a prior IPR.

In the latest episode of IPWatchdog Unleashed, I sat down with my good friends Brad Close, who is the Executive Vice President of Transpacific IP, and Jim Carmichael, a former judge on the Board of Patent Appeals and Interferences and founder of Carmichael IP. Brad, Jim and I engaged in a candid conversation that provides our unvarnished assessment of the Patent Trial and Appeal Board (PTAB), where it started historically, where it is today, and where it may finally be headed. Bottom line: the PTAB is no longer the automatic execution squad it once was, but durable patent rights will require reform well beyond the agency level.

U.S. Patent and Trademark Office (USPTO) Director John Squires on January 15 issued a Director Review decision, which he then designated as informative on January 16, in favor of Micron Technologies, vacating two Patent Trial and Appeal Board (PTAB) decisions granting institution of inter partes review (IPR) for Yangtze Memory Technologies. The decision addressed the issue of real party in interest (RPI), which Squires said Micron had sufficiently disputed, while Yangtze failed to rebut the evidence presented and show that it had named all RPIs.

A group of conservative leaders on Wednesday sent a letter to the Director of the National Economic Council, Kevin Hassett, and Chief of Staff to President Trump, Susie Wiles, strongly supporting the U.S. Patent and Trademark Office’s (USPTO’s) Notice of Proposed Rulemaking (NPRM) issued in October, titled “Revision to Rules of Practice before the Patent Trial and Appeal Board.” The NPRM modifies the rules of practice for inter partes reviews (IPRs) before the Patent Trial and Appeal Board (PTAB), with the stated goal being “to focus inter partes review proceedings on patent claims that have not previously been challenged in litigation or where prior litigation was resolved at an early stage.” The deadline for comments was December 2 and the Office has received 11,442 total submissions.

There are lots of familiar recommendations to make U.S. businesses more competitive globally. All are valid, but none are particularly creative or original. One solution that hasn’t been pursued is not only simple, a variation of it has been implemented by America’s largest and most aggressive economic competitor: remove the filing fees for inventors and intellectual property (IP)creators under 18.

This week on IPWatchdog Unleashed, I sat down with prolific inventor Gil Hyatt, exploring his innovative journey and aspirations to leave a lasting legacy. One of the key highlights of the conversation was Gil’s creation of a non-profit Pioneering AI Foundation, which is aimed at advancing AI technology and bolstering U.S. economic interests. This non-profit organization is set to hold Gil’s substantial portfolio of AI patent applications, which cover his pioneering work dating back to the 1980s, and includes groundbreaking claims in artificial intelligence that could revolutionize sectors like education, manufacturing, and trade.

The U.S. Patent and Trademark Office (USPTO) designated another Director Review decision precedential on Monday, January 12, following Friday’s designation of four precedential decisions. Today’s decision dealt with parallel petitions on the same patents challenging the same claims under different priority dates and held that such petitions “should be rare”.

On Friday, the U.S. Patent and Trademark Office designated a series of decisions on discretionary denial requests as either precedential or informative, highlighting considerations important for both inter partes review (IPR) and post-grant review (PGR) proceedings. In particular, precedential designations underscored the favored status of patent validity challenges through PGR petitions, and clarified important timing factors when determining whether to grant petitioner requests for joinder.