The USPTO’s recent guidance on discretionary denials has shifted patent practitioners back to the Fintiv and Sotera Wireless framework.
The Prior Framework: Fintiv & Sotera Wireless
In Apple Inc. v. Fintiv, Inc., No. IPR2020-00019 (PTAB Mar. 20, 2020), the Patent Trial and Appeal Board (the “Board”) implemented a holistic view of six factors (the
On Friday, February 28, 2025, the United States Patent and Trademark Office (USPTO) announced the withdrawal of the June 2022 memorandum titled “Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation,” which had been issued by former USPTO Director Kathi Vidal.
The 2022 Memorandum was intended to clarify the Patent
With U.S. Patent and Trademark Office (USPTO) Director Kathi Vidal’s return to private practice in December 2024 and the future permanent Director yet to be tapped for nomination, it is a good time to reflect on one of the most impactful processes that grew during Vidal’s tenure — Director Review. It was not until shortly
At the end of October, the U.S. Patent Trial and Appeal Board (“PTAB”) issued a final written decision in PGR2023-00023, finding all claims of a patent owned by Halliburton Energy Services unpatentable under 35 U.S.C. § 101.
Profrac Holding Corp and U.S. Well Services, LLC filed a petition for post grant review of all claims
The Promoting and Respecting Economically Vital American Innovation Leadership (PREVAIL) Act was introduced on June 22, 2023, with the aim to reform the U.S. Patent Trial and Appeal Board (PTAB). The PREVAIL Act serves as a supplement to the proposed STRONGER Patents Act, introduced in 2019.
The drafters have identified three key goals of the
The USPTO recently designated CommScope Techs. LLC. v. Dali Wireless, Inc.[1] and Nested Bean, Inc. v. Big Beings Pty Ltd.[2] as precedential PTAB decisions. Both decisions were before the Director of the USPTO, Katherine Vidal. A full list of precedential decisions may be found on the USPTO website.
CommScope Techs. LLC. v.
As the capabilities of Artificial Intelligence (AI) develop[1], the United States Patent and Trademark Office (USPTO) continues to grapple with a key question: Can an AI be an inventor?
On February 14, 2023, the USPTO posted a notice on Regulations.gov titled “Request for Comments: Artificial Intelligence and Inventorship[2].” This notice, however
The United States Patent and Trademark Office (USPTO) maintains a list of all PTAB precedential and informative decisions organized by subject matter.[1] These precedential decisions establish “binding authority concerning major policy or procedural issues, or other issues of exceptional importance, including constitutional questions, important issues regarding statutes, rules, and regulations, important issues regarding case
On October 18, 2022, the United States Patent and Trademark Office (USPTO) posted two notices on Regulations.gov seeking public input on the requirements to practice before the USPTO and Patent Trial and Appeal Board (PTAB). The goal is to expand admission criteria so “more Americans, including those from traditionally under-represented and under-resourced communities, can participate
On October 4, 2022, the United States Patent and Trademark Office (USPTO) announced that it would be extending the Motion to Amend (MTA) Pilot Program at the Patent Trial and Appeal Board (PTAB) for a second time—now set to run through September 16, 2024.[1]
The MTA Pilot Program was initiated on March 15, 2019,