PTAB Announces Bifurcated Process for Consideration of Discretionary Denial Issues
By Jennifer Chheda, Yi Dulkeith, and Tova Werblowsky - A new interim process for the Director to exercise discretion as to whether to institute an inter partes review(IPR) or a post grant review (PGR) was announced on March 26, 2025, in which discretionary...
PTAB Issues Updated Fintiv Guidance
By Matt 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 The updated guidance states: On February 28, 2025, the USPTO rescinded the June...
Federal Circuit Affirms Despite Claim Construction Error
By Alexa Grillis and Matt Johnson - The Federal Circuit upheld the PTAB’s decision deeming an integrated circuit connector patent unpatentable for obviousness, despite concluding that the Board’s claim construction was erroneous. The Court also rejected a challenge...
Motivation to Modify Prior Art Need Not Be the Same as Challenged Patent
By Kait Crowder and Matt 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...
Petitioner’s Proof of Printed Publication Falls Short
By Mike Lavine - On February 6, 2025, the PTAB denied IPR institution because the Petitioner failed to establish that its key prior art reference qualified as a printed publication under Section 102(b). The PTAB’s decision hinged on whether the “Dammann” reference,...