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2 weeks ago | 
jdsupra.com | Jennifer Chheda Ph.D |Sarah A. Geers |Matthew Johnson
On March 26, 2025, the U.S. Patent and Trademark Office ("USPTO") acting director sent a memorandum regarding a new interim process for workload management to all Patent Trial and Appeal Board ("PTAB") judges.
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2 weeks ago | 
jdsupra.com | Matthew Johnson |Joshua Nightingale |Daniel Sloan
Recent developments at the USPTO suggest a significant shift in favor of the PTAB exercising discretionary denial and uncertainty on behalf of parties to PTAB proceedings. On March 24, 2025, following the February 28, 2025 rescission of former Director Vidal’s June 21, 2022 memorandum entitled “Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation,” Chief Administrative Patent Judge Scott R.
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4 weeks ago | 
jdsupra.com | Matthew Johnson
After rescinding the June 2022 guidance regarding Fintiv, the PTAB issued updates to how they will consider discretionary denial issues under Section 314(a) on Monday. The updated guidance states:On February 28, 2025, the USPTO rescinded the June 21 , 2022 memorandum entitled “Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation” (“Interim Procedure”).
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1 month ago | 
jdsupra.com | Matthew Johnson
Honeywell filed a petition for inter partes review of 3G Licensing’s U.S. Patent No. 7,319,718, which claims a coding scheme for transmitting information in 3G mobile communication systems. The PTAB found none of the challenged claims unpatentable. Honeywell appealed.
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1 month ago | 
mondaq.com | Ellen Geyer |Matthew Johnson
The Federal Circuit rejected a recent argumentthat the PTAB does not have inter partes review (IPR)jurisdiction over expired patents. Because even expired patentsinvolve the grant of public rights, the court explained that thePTAB's authority is not tied to the patent's status. The case arose after Gesture was granted a patent for its imagecapture technology, which triggers a digital camera to capture animage when a particular motion – a gesture – isdetected in the visual field.
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1 month ago | 
jdsupra.com | Ellen Geyer |Matthew Johnson
The Federal Circuit rejected a recent argument that the PTAB does not have inter partes review (IPR) jurisdiction over expired patents. Because even expired patents involve the grant of public rights, the court explained that the PTAB’s authority is not tied to the patent’s status. The case arose after Gesture was granted a patent for its image capture technology, which triggers a digital camera to capture an image when a particular motion – a gesture – is detected in the visual field.
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1 month ago | 
jdsupra.com | Matthew Johnson |Ashvi Patel
On Friday, the USPTO rescinded its June 21, 2022, guidance memorandum entitled “Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation.” That memorandum discussed Office policy for discretionary denials in view of co-pending litigation.
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1 month ago | 
jdsupra.com | Sabrina Bellantoni |Matthew Johnson
Recently, a Director Review was granted where Director Vidal vacated the Patent Trial and Appeals Board’s (“PTAB”) Final Written Decision and remanded back to the PTAB for further consideration of enablement. Duration Media LLC v. Rich Media Club LLC, IPR2023-00953, Paper 78 (December 12, 2024). In May 2023, Duration Media LLP (“Petitioner”) filed a Petition requesting an inter partes review (“IPR”) of U.S. Patent No. 11,443,329 (“the ’329 patent”).
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2 months ago | 
mondaq.com | Matthew Johnson
The Patent Trial and Appeal Board ("PTAB") recently denied institution in an inter partesreview ("IPR") where Petitioner later filed a parallelpetition against the same claims of the same patent. Shenzhen Root Tech. Co., Ltd. v. Chiaro Tech. Ltd.,IPR2024-00953, Paper 18 (PTAB Dec. 16, 2024). Petitioner filed the first petition on May 31, 2024.
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Dec 23, 2024 | 
jdsupra.com | Matthew Johnson
In a 2-1 decision, the Patent Trial and Appeal Board (“PTAB”) denied a patent owner’s motion to file two new declarations in connection with its sur-reply, holding that the patent owner failed to prove the extraordinary circumstances necessary for such a filing. See Omega Liner Company, Inc. v. Buergofol GmbH, No. IPR2023-01372, Paper 44 (P.T.A.B. Nov. 18, 2024). On September 12, 2023, Omega Liner Company, Inc.
