Category: Post Grant Review
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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Grant Review, PTAB, PTAB Patent Trials, PTO Director Review of AIA Trials, PTO Sued Under the APANov. 6, 2025 In three nonprecedential orders issued today, the U.S. Court of Appeals for the Federal Circuit denied mandamus relief for petitioners challenging the Patent Trial and Appeal Board’s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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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…
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PTAB Relies on the Federal Circuit’s Recent § 101 Decision to Deny CBM Institution
On May 12, 2016, the Federal Circuit issued a decision on 101 patent eligibility that overturned a summary judgment finding of § 101 invalidity for software used for databases. Enfish, LLC v. Microsoft Corp., No. 2015-1244, 2016 WL 2756266 (Fed. Cir. May 12, 2016). The Enfish v. Microsoft decision interpreted the “abstract idea” first prong of…
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New PTAB Trial Practice Rules Effective May 2, 2016
On April 1, 2016 the PTO published its final rule on Amendments to the Rules of Practice for Trials Before the Patent Trial and Appeal Board. A small correction to these Amendments was published on April 27. I presented a summary of these rule changes at the AIPLA Spring Meeting in Minneapolis, MN on May 18, 2016. The…