Category: America Invents Act
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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Grant Review, PTAB, PTAB Patent Trials, PTO Director Review of AIA Trials, PTO Sued Under the APANov. 6, 2025 In three nonprecedential orders issued today, the U.S. Court of Appeals for the Federal Circuit denied mandamus relief for petitioners challenging the Patent Trial and Appeal Board’s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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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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PTO Brief Argues Why PTAB Can Issue Decisions On Remand From FedCir
Under the America Invents Act IPRs are supposed to be completed with a final written decision no later than a maximum of 18 mos after institution. But if the FedCir remands for further findings on appeal can the PTAB issue a decision on remand past the 18 mos? “Yes” says the USPTO, and in a…
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Complex Claim Construction Issues in Knowles Electronics v. Cirrus Logic
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A recent Federal Circuit case demonstrates the complexity of resolving difficult claim construction issues in multiple agency and court proceedings. In Knowles Electronics v. Cirrus Logic the Federal Circuit declined to apply its own prior claim interpretation of the same term of the same claims of the same patent. U.S. Patent No. 6,781,231 (“the ’231 patent”) entitled “Microelectromechanical System…
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PTAB Boardside Chat Provides Statistics About Multiple IPR Petition Filings
On October 24, 2017, PTAB Chief Judge David Ruschke and Lead Judge William Saindon conducted a webinar covering filing statistics for IPR petition filings, and in particular how multiple petitions have fared statistically in the PTAB. They also announced three informative decisions relating to the 35 USC § 325(d) issue: IPR2016-01571 – Unified Patents, Inc. v. Berman IPR2017-00739…
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Are Patent-Friendly PTAB Decisions On the Rise?
Patent litigation changed with passage of the America Invents Act. Overnight the PTAB became a new venue for challenging patent claims using IPRs, CBMs and PGRs. The initial reaction by the patent bar to the PTAB’s “take charge” approach to instituting review and canceling patent claims was met with approval by businesses under attack by…
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Patent Due Diligence and Evaluation After the AIA
Many factors must be considered for due diligence and valuation of a patent portfolio. The patent owner’s desire to have broad claims that capture a large number of infringements must be tempered against its need for claims that will not be deemed invalid in view of prior art. Before the America Invents Act (AIA), patents…
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4 Tips to Make Your Patent Portfolio AIA-Ready
The America Invents Act (AIA) has changed the way that patents are enforced. In traditional patent litigation, a patent was drafted to perform in district court. After the AIA, when patents are asserted, they are first challenged in administrative proceedings before the Patent Trial and Appeal Board (PTAB). These proceedings, called IPRs (inter partes reviews), PGRs…