Category: America Invents Act
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Preexamination III: Conception, Inventorship, and the Limits of Landscape
Series note. This is the third post in the Preexamination series. Start with Preexamination: Seeing the Art Before the Office Does and Preexamination II: Landscape For Drafting Invention requires conception U.S. inventorship requires invention and invention requires conception. The USPTO’s revised inventorship guidance states the governing standard in the Federal Circuit’s terms and quotes them…
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Preexamination: Seeing the Art Before the Office Does
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in AI assisted patent analysis, AI assisted Patent Generation, America Invents Act, Artificial Intelligence and Patents, Artificial Intelligence for Examination of Patent Applications, Artificial Intelligence for Patents, claim amendments, claim challenges, Examination Automation, inter partes review, IPR, Large Language Model (LLM), Machine Learning (ML), Patent generation to avoid validity challenges, Patent Portfolio Management, Post Grant Review, Preexamination, prior art, PTAB Patent Trials, reexamination generally, Synthetic ExaminationFor as long as people have recorded what they know, two capabilities have raced each other: the rate at which we generate information, and the ability to find and make sense of what we already have. Neither has held the lead for long. Every leap in one exposes the inadequacy of the other. The field…
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Institution Discretion and the 2026 AIA Docket
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in America Invents Act, Ex Parte Prosecution, Federal Circuit Review of PTAB Proceedings, Future of PTAB Trial Practice, inter partes review, Litigation, Mandamus Actions in the Federal Circuit, Patent Portfolio Management, petitions practice, Post Grant Review, Prosecution Guidelines, PTAB, PTAB Patent Trials, PTO Director Review of AIA Trials, reexamination generally, serial petitionsSept. 2, 2026 Last September, after John Squires was confirmed as Director, I wrote that we would see whether the then-emerging line of discretionary dismissals of IPR petitions “is to be extended or will itself be tempered.” The Federal Circuit answered the reviewability half on November 6. The 2026 filing and institution numbers supply the…
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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…