Author: Tim Bianchi
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Federal Circuit Denies Mandamus in Three IPR Institution Challenges: Deference to PTAB Discretion
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in Amended Rulemaking, America Invents Act, claim challenges, Federal Circuit, Federal Circuit Review of PTAB Proceedings, Future of PTAB Trial Practice, IPR, Litigation, Mandamus Actions in the Federal Circuit, Post Grant Review, PTAB, PTAB Patent Trials, PTO Director Review of AIA Trials, PTO Sued Under the APANov. 6, 2025 In three nonprecedential orders issued today, the U.S. Court of Appeals for the Federal Circuit denied mandamus relief for petitioners challenging the Patent Trial and Appeal Board’s (PTAB) discretionary denials of inter partes review (IPR) petitions. These decisions—arising from parallel district court litigation and the recent rescission of interim guidance on IPR…
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USPTO Automated Search Pilot Program: Enhancing Early Prior Art Assessment
The United States Patent and Trademark Office (USPTO) has announced an Automated Search Pilot Program in the Federal Register on October 8, 2025. This initiative evaluates the effects of providing AI-generated search results prior to substantive examination of original, noncontinuing, nonprovisional utility patent applications. By issuing an Automated Search Results Notice (ASRN) to participants, the…
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Petitioners Target PTAB’s Discretionary Denials with Federal Circuit Mandamus Petitions
In a series of recent filings before the U.S. Court of Appeals for the Federal Circuit, petitioners including Motorola Solutions, Inc., SAP America, Inc., Google LLC, Samsung Electronics Co., Ltd., SanDisk Technologies, Inc., Western Digital Technologies, Inc., and HighLevel, Inc. are pressing for writs of mandamus to overturn PTAB denials of inter partes review (IPR)…
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PTAB Discretionary Denials and Patent Prosecution Topics at the 2025 Midwest IP Institute
Join us at the 2025 Midwest IP Institute on September 18 and 19 for a deep dive into patent, trademark, and copyright topics. On Friday, September 19, I’ll be moderating a special panel discussing recent PTO developments that impact patent practice. We’ll explore PTAB discretionary denials, the new prior art fee structure, and their influence…
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A Conversation with an AI Bot About Patents
It’s hard being a nerd, but yes, I interviewed an AI Bot to learn more about how it “thinks” and how to better work with it, especially as it relates to patents. * * *Human: How does a Large Language Model (LLM) determine higher frequency phrases? Bot: An LLM like myself determines higher frequency phrases…
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USPTO Withdraws Proposed Rulemaking on Terminal Disclaimers
The United States Patent and Trademark Office (USPTO) has officially decided to halt its proposed changes to terminal disclaimer practice, a decision set to be published in the Federal Register on December 4, 2024. This move has been met with relief by many in the patent community due to the significant alterations the rulemaking would…
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Federal Circuit Weighs in on Exceptional Case Determinations in Realtime Adaptive Streaming v. Sling TV and Dish
A recent Federal Circuit decision provided some additional insight into exceptional case determinations in patent infringement disputes. In Realtime Adaptive Streaming v. Sling TV, the Federal Circuit reviewed an award of attorneys’ fees granted to DISH and related Sling entities (collectively, DISH) by the United States District Court for the District of Colorado. Realtime Adaptive…
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To Limit or Not To Limit, That is the Question
It’s 2024, but patent attorneys and judges still can’t agree whether a preamble is limiting to determine potential patent infringement. One recent district court case tees up this issue in style. District court Chief Judge Colm F. Connolly was presented the issue of whether the preamble “a vaccine” was limiting or not in Alnylam Pharmaceuticals…
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Patent Office Director Vidal Finds OpenSky’s IPR Conduct to be Abuse of Process
Director Vidal issued a careful decision concerning OpenSky’s copycat filings and subsequent conduct in OpenSky Industries, LLC v. VLSI Technology LLC, IPR2021-01064, Paper 102. The conclusion provides a great summary of her findings: Viewed as a whole, OpenSky’s conduct has been an abuse of the IPR process, the patent system, and the Office.…