PTAB Pendulum Swings in Favor of Discretionary Denial
By Joshua Nightingale and 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...
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 The updated guidance states: On February 28, 2025, the USPTO rescinded the June...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...