Posts Tagged: "post grant procedures"

Earlier today, Acting U.S. Patent and Trademark Office (USPTO) Director Coke Morgan Stewart addressed the Intellectual Property Business Congress (IPBC) Global 2025, telling those in attendance that the Office is already making headway by chipping away at the record backlog inherited from the Biden Administration. Not surprisingly, however, much of Stewart’s remarks focused on new Patent Trial and Appeal Board (PTAB) initiatives and a desire on the part of the Office to see patent challengers migrate away from filing inter partes review (IPR) challenges and toward filing third-party submissions of prior art during examination so examiners can be presented with the best prior art, which will lead to better examination and fewer mistakes.

Last Friday, U.S. Patent and Trademark Office (USPTO) Acting Director Coke Morgan Stewart issued a pair of orders on Director review of inter partes review (IPR) proceedings at the Patent Trial and Appeal Board (PTAB) petitioned by mobile network provider Motorola Solutions to challenge digital video recording patent claims owned by Stellar LLC. While Stewart’s rulings confirm there is no retroactive application of the USPTO’s recent rescission of previous guidance on PTAB discretionary denials, they also underscore that IPRs instituted prior to the guidance’s rescission this February will be subject to Acting Director Stewart’s discretionary denial framework if Director Review requests on those institution decisions are still pending.

Today, the U.S. Court of Appeals for the Federal Circuit (CAFC) issued a precedential decision in Incyte Corp. v. Sun Pharmaceutical Industries, Ltd. dismissing Incyte’s appeal from post-grant review (PGR) proceedings at the Patent Trial and Appeal Board (PTAB) for lack of Article III standing. While the Federal Circuit majority deciding the case found that Incyte couldn’t establish a sufficient injury in fact, Circuit Judge Todd Hughes authored a concurrence echoing his previous concerns regarding the appellate court’s overly rigid and narrow standard for analyzing standing in PTAB appeals.

U.S. Patent and Trademark Office (USPTO) Acting Director Coke Morgan Stewart has provided additional information on the Office’s Interim Processes for Patent Trial and Appeal Board (PTAB) Workload Management in an attempt to address unspecified questions the agency has been receiving about the new procedure. Stewart sent a memorandum to all PTAB Administrative Patent Judges (APJs) last week detailing the new interim process for workload management. According to the memo, to ensure the PTAB can continue to meet its statutory obligations relating to ex parte appeals, the Director will exercise her discretion under 35 U.S.C. 314(a) and 324(a) to determine whether discretionary denial is appropriate for any petition for inter partes review (IPR) or post-grant review (PGR).

Yesterday, the U.S. Court of Appeals for the Federal Circuit issued a precedential decision in CQV Co., Ltd. v. Merck Patent GmbH, vacating the Patent Trial and Appeal Board’s (PTAB) determination that CQV failed to show the unpatentability of Merck patent claims to pearlescent automotive coatings in post-grant review (PGR) proceedings. Although the Federal Circuit’s vacatur was based on substantial evidence review of the PTAB’s ruling, most of the appellate court’s opinion dealt with issues surrounding CQV’s Article III standing to appeal the PTAB’s adverse decision without itself facing patent infringement allegations.

Today the U.S. Patent and Trademark Office (USPTO), which is now being led by Acting Director Coke Morgan Stewart, rescinded former USPTO Director Kathi Vidal’s 2022 memo, titled “Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation.” That memo explained that the Patent Trial and Appeal Board (PTAB) “will not deny institution of an IPR or PGR under Fintiv (i) when a petition presents compelling evidence of unpatentability; (ii) when a request for denial under Fintiv is based on a parallel ITC proceeding; or (iii) where a petitioner stipulates not to pursue in a parallel district court proceeding the same grounds as in the petition or any grounds that could have reasonably been raised in the petition.”

According to Bloomberg Law, the administrative patent judges (APJs) of the U.S. Patent and Trademark Office’s (USPTO’s) Patent Trial and Appeal Board (PTAB) will be asked to return to the office as soon as February 24—a move which former USPTO Director Kathi Vidal said would make the PTAB inefficient and unable to keep up with its current timelines for decisions.

Twenty years ago, Congress began hearing that the patent system needed a faster, cheaper way than district court suits to assess the validity of issued patents. In line with this goal, Congress emphasized that the new procedure was to be “an alternative to expensive district court litigation.”

With the process for requesting Director Review formally codified as of October 31, 2024, the evolving landscape of intellectual property law continues to be shaped by another avenue of decision-making from the United States Patent and Trademark Office (USPTO). Among the developments in the second half of 2024, USPTO Director Review decisions addressed issues ranging from obviousness determinations and claim construction to procedural considerations under 35 U.S.C. § 325(d). These decisions not only refine the parameters of inter partes review (IPR) but also illuminate broader implications for patent practitioners and stakeholders navigating the patent system. This article explores Director Review decisions from the second half of the year, providing insights into their practical consequences for practitioners.

Much ink has been spilled over the grim odds facing patent owners in inter partes review (IPR) proceedings. For the October 2023-October 2024 period, institution rates by patent have reached 74% (up from 66% in 2021) and, once instituted, 84% of final written decisions result in some or all challenged claims being found unpatentable. But patent owners may improve significantly upon these odds. In this regard, clear, compelling, and rigorously supported briefs are the most important tool for achieving success in the Patent Trial and Appeal Board (PTAB). Below are ten tips for crafting winning briefs.

Two recent petitions to the U.S. Patent and Trademark Office (USPTO) for Director Review of denial of post grant review institution decisions claim that the Patent Trial and Appeal Board’s (PTAB’s) approach to reviewing plant utility claims is deterring competition in seed markets. The petitions, filed by Inari Agriculture, Inc., ask the USPTO Director to reverse two denials of institution relating to U.S. patent Nos. 11,659,803 and 11,666,020, owned by Pioneer Hi-Bred International, Inc., both covering inbred corn plants.

The U.S. Patent and Trademark Office (USPTO) announced today that it has finalized a proposed rule expanding opportunities to practice before the Patent Trial and Appeal Board (PTAB). After considering comments received, the final rule will allow parties to proceed without separate backup counsel contingent upon a showing of good cause. However, the final rule scrapped a proposal to permit non-registered counsel admitted pro hac vice to serve as lead counsel in America Invents Act (AIA) proceedings.

On July 10, 2023, Senators Chris Coons (D-DE), Thom Tillis (R-NC), Dick Durbin (D-IL), and Mazie Hirono (D-HI), officially introduced S. 2220 in the 118th Congress, called the “Promoting and Respecting Economically Vital American Innovation Leadership Act,” or the PREVAIL Act. The bill is one of three patent bills that have been scheduled to be considered by the Senate Judiciary Committee in recent weeks. While the hearing has now been pushed twice, it is on the calendar again for Thursday, September 26.

This week we saw slightly below average numbers of patent filings at both the Patent Trial and Appeal Board (PTAB) and in district court. In the PTAB, there were 21 new filings—all inter partes reviews (IPRs). Samsung filed three petitions challenging three patents held and asserted by Collision Communications [associated with Concert Technology Corporation]. Five Intellectual Ventures [associated with Intellectual Ventures LLC] patents were challenged this week, in six IPRs. TCL and Lenovo each filed a petition challenging the same Intellectual Ventures II patent, Lenovo also filed another three petitions, challenging three patents held by Intellectual Ventures II, while Early Warning Services LLC filed the sixth petition, challenging an Intellectual Ventures I patent.

The invalidation rate of patents in America Invents Act (AIA) proceedings, such as inter partes reviews (IPRs), has been high since the inception of the PTAB. Just one year into the AIA, Chief Judge Randall Rader famously referred to the PTAB as a “death squad” at the 2013 American Intellectual Property Law Association (AIPLA) annual meeting because the invalidation rate was so high. This article focuses on the “total invalidation” rate where all challenged claims are found invalid such that the patent is effectively killed off. (For convenience, we refer to “invalidation” with the understanding that the PTAB adjudicates claims as “unpatentable”).