Posts Tagged: "inter partes review"

The year 2025 was one of profound change at the U.S. Patent and Trademark Office (USPTO). The magnitude and rate at which changes were implemented is unprecedented. The size and role of the Patent Trial and Appeal Board (PTAB) in America Invents Act (AIA) proceedings like inter partes reviews (IPRs) was completely overhauled.

On Friday, December 12, the U.S. Patent and Trademark Office (USPTO) announced an update to the Patent Trial and Appeal Board (PTAB) Trial Practice Guide implementing a requirement for parties to participate in a pre-hearing conference 15 days prior to America Invents Act (AIA) oral hearings in cases instituted by the USPTO Director. According to a USPTO press release, the purpose of the pre-trial hearing conference will be for the Board to guide the parties as to which issues they should address, as well as to give parties a chance to explain the issues they would like to focus on at the oral hearing.

There’s a lot going on at the Patent Trial and Appeal Board (PTAB) right now, and it’s not just the usual noise about discretionary denial. The United States Patent and Trademark Office (USPTO) has published a one-and-done rules package that, if it survives, would fundamentally change how inter partes review (IPR) challenge works, who can challenge patents, and when. The comment window on the proposed one-and-done rule has now closed. With more than 10,000 comments received by the USPTO and over 700 individual commenters weighing in, the proposed rules package has become a flashpoint for questions that go way beyond discretionary denial and AIA trials, with many asking whether the USPTO is functionally trying to engage in de facto legislation to neuter the PTAB.

The U.S. Court of Appeals for the Federal Circuit (CAFC) today issued three decisions denying mandamus relief to inter partes review (IPR) petitioners at the Patent Trial and Appeal Board (PTAB) whose petitions were denied institution.  

The deadline for comments on 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,” was yesterday, December 2. As of today, the Office has received 10,783 comments and has published just over 1,000 of them. The rules have been broadly welcomed by IP holders and practitioners, and broadly opposed by those who want to preserve the option to easily challenge patents. Below, we summarize several submissions from individuals and organizations on both sides.

Last week, patent challenging entity OpenSky Industries filed a reply brief as cross-appellant at the U.S. Court of Appeals for the Federal Circuit (CAFC) in patent owner VLSI Technology’s appeal of a sanctions ruling by former U.S. Patent and Trademark Office (USPTO) Director Kathi Vidal. Although VLSI challenges Vidal’s ruling for failing the requirements of the Administrative Procedures Act (APA) and for joining Intel to OpenSky’s patent challenge despite the time-barred nature of Intel’s validity challenge, OpenSky contends that the agency continues to engage in post-hoc rationalization of its sanctions determination and deprived OpenSky of an opportunity to cure and be heard on its Noerr-Pennington immunity argument.

On Friday, the U.S. Patent and Trademark Office (USPTO) published an order granting a third-party request for ex parte reexamination of patent rights owned by American computer memory developer Netlist and asserted in a larger infringement action against tech giants Samsung and Google across several legal fora. The USPTO’s reexamination grant comes despite a series of so far unsuccessful validity challenges raised by alleged infringers against the same patent rights, which are now challenged by an anonymous party repackaging many of the arguments that previously failed.

The U.S. Court of Appeals for the Federal Circuit (CAFC) on Thursday reversed a Patent Trial and Appeal Board (PTAB) finding that Google had failed to prove one claim of a patent directed to CAPTCHA-like technology unpatentable. The opinion was authored by Judge Taranto and the panel included Chief Judge Moore and Judge John H. Chun of the U.S. District Court for the Western District of Washington, sitting by designation.

The U.S. Court of Appeals for the Federal Circuit on Monday heard oral argument in Micron Technology v. Longhorn IP, a test of state “anti-troll” statutes’ interplay with federal patent law. As inter partes review (IPR) becomes more and more difficult to obtain, those state statutes could play an important role in discouraging abusive patent enforcement—provided they are deemed to be constitutional.

Today, the U.S. Court of Appeals for the Federal Circuit (CAFC) issued a nonprecedential ruling in CPC Patent Technologies Pty Ltd. v. ASSA ABLOY AB reversing an obviousness determination by the Patent Trial and Appeal Board (PTAB) over a dissent by Circuit Judge Evan Wallach from the majority’s analysis of the PTAB’s factual findings on prior art disclosures. Although the reversal gives CPC Patent another opportunity to salvage patent claims to biometric card security systems, the CAFC also issued a Rule 36 summary affirmance affirming the invalidity of other claims from the patent-at-issue, while the U.S. Supreme Court denied cert to a CPC Patent petition challenging the CAFC’s Rule 36 practice in separate PTAB appeals.

The U.S. Court of Appeals for the Federal Circuit (CAFC) has denied three mandamus petitions asking the court to step in and curb the recently-implemented practice by which the U.S. Patent and Trademark Office (USPTO) Director decides whether to institute inter partes review (IPR) proceedings. In the one precedential ruling in In Re Motorola Solutions, Inc., the CAFC—in an opinion authored by Judge Linn—rejected Motorola’s arguments that then-Acting USPTO Director Coke Morgan Stewart violated the Administrative Procedure Act (APA) and the Due Process clause of the Fifth Amendment to the Constitution by deinstituting eight IPR petitions it filed against claims of Stellar LLC’s patents.

The U.S. Patent and Trademark Office (USPTO) announced today that it is extending the comment period for a proposed rule published on October 17 by 15 days in response to requests from stakeholders. The Notice of Proposed Rulemaking (NPRM) titled “Revision to Rules of Practice before the Patent Trial and Appeal Board” has as its stated goal “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.” A press release issued on the NPRM said that, under current practice, “the Office is concerned that even extremely strong patents become unreliable when subject to serial or parallel challenges.”

Continuing his pro-patent owner tack so far, U.S. Patent and Trademark Office (USPTO) Director John Squires  on Wednesday designated as “informative” a Director Review decision in which he relied on the recently-designated precedential decision in Revvo Technologies, Inc. v. Cerebrum Sensor Technologies, Inc. to vacate and deny institution of an inter partes review filed by Tesla, Inc.

U.S. Patent and Trademark Office (USPTO) Director John Squires issued a Director Review decision on Monday, which he designated as precedential, vacating a decision granting institution of an inter partes review (IPR) because the Board erred in accepting the petitioner’s inconsistent claim constructions without explanation. In Revvo Technologies, Inc. v. Cerebrum Sensor Technologies, Inc., the PTAB instituted the IPR on September 15, 2025, and Director Review was initiated sua sponte in order to address the claim construction issues.

The U.S. Court of Appeals for the Federal Circuit (CAFC) issued a precedential decision on Thursday, in part clarifying its precedent on the interpretation of “by others” or “by another” under pre-America Invents Act (AIA) 35 U.S.C. §§ 102(a), (e). The opinion was authored by Judge Linn. Merck Serono appealed two decisions of the Patent Trial and Appeal Board (PTAB) holding claims of Merck’s U.S. Patent Nos. 7,713,947 and 8,377,903 unpatentable in inter partes review (IPR) proceedings brought by Hopewell Pharma Ventures. The Board found the claims unpatentable as obvious over a combination of two prior art references, “Bodor” and “Stelmasiak”.