The U.S. Patent and Trademark Office (USPTO) today held its third PTAB Listening Session, this one focused on Patent Trial and Appeal Board (PTAB) Administration and Reform. Panelists on both the petitioner and patent owner sides, as well as academics, IP policy experts and judges, weighed in on what changes need to be made to the PTAB to strike the balance that will most benefit the U.S. IP system. While the suggestions varied, most of the panelists agreed that greater clarity and consistency is what’s urgently needed at the moment.
Today, the U.S. Supreme Court issued an order list showing that the nation’s highest court had denied a series of petitions for writ of certiorari filed by major pharmaceutical developers to challenge the Medicare negotiation program established by the Inflation Reduction Act (IRA). The Supreme Court also denied cert to an appeal of Section 101 patent-eligibility issues from a Federal Circuit ruling involving mobile banking technology, as well as a pro se cert appealing copyright and intentional infliction of emotional distress (IIED) against Disney.
On Thursday, May 14, U.S. Patent and Trademark Office (USPTO) Director John Squires issued a Director Discretionary Decision in which he denied institution of an inter partes review (IPR) petition and marked the opinion precedential, underscoring six key principles that should guide whether the Office institutes America invents Act (AIA) proceedings.
On May 15, the U.S. Court of Appeals for the Federal Circuit (CAFC) issued a precedential ruling in mCom IP, LLC v. City National Bank of Florida affirming the Southern District of Florida’s dismissal of patent owner mCom IP’s complaint after finding the asserted patent claims obvious on the same grounds as related patent claims invalidated at the Patent Trial and Appeal Board (PTAB). However, the Federal Circuit found that the district court improperly concluded that the case was exceptional, leading the appellate court to reverse the attorney’s fee award and attorney sanctions after finding the plaintiff did not develop evidence of frivolous litigation conduct.
I keep hearing the same thing from patent professionals across the industry—inside companies, inside law firms, and even from investors. Patent budgets are shrinking, expectations are rising, and nobody seems willing to admit what that combination actually means.
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This week on IPWatchdog Unleashed, I had the pleasure of speaking with Deborah Farone, founder of Farone Advisors, former Chief Marketing Officer of Cravath, Swain & Moore, and author of Breaking Ground: How Successful Women Lawyers Build Thriving Practices. Our conversation focused on how lawyers—particularly in highly technical fields like intellectual property—can build thriving practices through disciplined, strategic business development. The discussion underscores that business development is a skill, not an innate personality trait. Even introverted attorneys can succeed by taking incremental steps, practicing authentic communication, and focusing on listening rather than selling.
As in-house patent teams rethink how work is allocated, the implications for outside counsel are unavoidable. Corporate clients are asking whether work being done by outside counsel is being performed as efficiently as possible and even starting to ask whether it needs to be performed by outside counsel at all. At least some in-house teams are wondering whether the same or better result can be achieved internally using AI-enabled tools. If the answer is yes, then clients can be expected to decrease reliance on outside counsel, looking to law firm attorneys for targeted support, not end-to-end project management.
This week in Other Barks & Bites: the Legislative Branch Agencies Clarification Act moves one step closer toward enactment; the Federal Circuit reverses attorney’s fees award and attorney sanctions in a patent case over e-banking technology; the Court of Justice for the European Union finds that a publisher’s right to fair compensation established by EU member states is permissible if qualifying as consideration for the right to republish; Nokia earns a stay of UK court rulings in its RAND licensing battle over video codec patents with Acer and Asus; the U.S. Patent and Trademark Office places informative designations on a trio of Patent Trial and Appeal Board decisions applying agency precedent on inconsistent claim construction positions; Cisco announces 4,000 layoffs on the same day that it reported a 12% year-over-year jump in quarterly revenues; top Congressional Democrats publicly opposed President Trump’s ouster of the National Science Board membership; and the European General Court tells the European Union Intellectual Property Office that it did not sufficiently analyze links between an ammunition trademark and a famous French comic serial.
To say we live in perplexing times is an understatement. Everything seems to be shifting beneath our feet, often with seemingly little thought. One example is the move to change how the federal government supports research. It wasn’t until the passage of the Bayh-Dole Act in 1980, which injected the incentives of patent ownership into the system, that the situation changed. And the result was dramatic.
This week on IPWatchdog Unleashed we discuss whether patent owners are better off facing post-grant challenges at the Patent Trial and Appeal Board (PTAB) or the Central Reexamination Unit (CRU) at the United States Patent and Trademark Office (USPTO). PTAB practitioners Matt Phillips and Kevin Greenleaf joined me for about how patent owners and challengers should be strategically thinking about the shifting post-grant environment at the USPTO. Our conversation highlights the growing reality that post-grant practice is no longer defined solely by inter partes review (IPR), but that ex parte reexamination has seen a resurgence in popularity, which requires careful evaluating timing, procedural dynamics, cost, and institutional realities. Fundamentally we attempt to answer the question of whether patent owners are better off in reexamination, or whether they are better off with IPR at the PTAB.
Today, the U.S. Supreme Court issued an order list including the denial of a petition for writ of certiorari filed by Dr. Stephen Thaler that challenged federal agency and court rulings preventing copyright registration for an image generated entirely by artificial intelligence (AI). In following the U.S. Solicitor General’s call to deny cert to Thaler’s appeal, the Supreme Court declined invitations from both sides of the AI authorship debate to clarify the copyrightability of works that are substantially AI-generated.
The U.S. Supreme Court on Monday denied certiorari in Zioness Movement, Inc. v. The Lawfare Project, Inc., a case in which Zioness Movement sought review of a U.S. Court of Appeals for the Second Circuit decision that upheld a jury verdict allowing two competing nonprofit entities to co-own the “Zioness” trademark.
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