PTAB Rescinds Discretionary Denial Memorandum
By Ashvi Patel and Matt Johnson - On Friday, the USPTO rescinded its June 21, 2022, guidance memorandum entitled “Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court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...
Two Separate Analyses: Nonobviousness vs Enablement
By Sabrina Bellantoni and Matt 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...
Speculative IPR Discovery Request Not in the Interest of Justice
By Lisa Furby and Jim Twieg - “Because Congress intended inter partes reviews to serve as a faster and more cost-effective alternative to litigating validity in district courts, discovery in inter partes reviews is limited.” See Garmin Int'l, Inc. v. Cuozzo Speed...
PTAB Decides Concurrent IPR and PGR Petitions After Resolving Priority Date Dispute
By Lisa Furby and Anneli Kawaoka - In anticipating a dispute over whether the America Invents Act would apply, Petitioner MPL Brands NV, Inc. (“MPL”) filed concurrent petitions for both inter partes review and post-grant review of U.S. Patent No. 11,932,441 (“’441...
USPTO/PTAB: Changes are on the Horizon
By Sarah Geers and Connor Scholes - In the closing weeks of 2024, USPTO Director Kathi Vidal announced her departure in a November LinkedIn post, stating that she would leave the Office during the second week of December to rejoin the partnership of Chicago-based law...