News & Analysis as of

United States Patent and Trademark Office Patent Trial and Appeal Board

The U.S. Patent and Trademark Office is an agency of the United States Department of Commerce that serves a fundamental role in the U.S. intellectual property system by issuing patents and registering trademarks.... more +
The U.S. Patent and Trademark Office is an agency of the United States Department of Commerce that serves a fundamental role in the U.S. intellectual property system by issuing patents and registering trademarks.    less -
McDermott Will & Emery

Seeing double? Director instructs Board to resolve claim construction pre-institution

The acting director of the US Patent & Trademark Office (PTO) vacated and remanded a Patent Trial & Appeal Board decision to institute two inter partes review (IPR) petitions that challenged the same claims. The acting...more

Knobbe Martens

The Federal Circuit Grounds US SPACE FORCE Trademark Application

Knobbe Martens on

IN RE THOMAS D. FOSTER, APC, - Before Moore, Prost, and Stoll. Appeal from the United States Patent and Trademark Office. Section 2(a) of the Lanham Act bars registration of a pending application for a mark that falsely...more

WilmerHale

PTAB/USPTO Update - July 2025

WilmerHale on

On June 12, the nominee for USPTO Director John Squires was voted out of the Senate Judiciary Committee by a vote of 20-2.  His nomination has been placed on the Senate’s Executive Calendar and will proceed to a floor vote....more

Alston & Bird

Patent Case Summaries | Week Ending June 27, 2025

Alston & Bird on

CrowdStrike, Inc. v. GoSecure, Inc., Nos. IPR2025-00068, -00070 (June 25, 2025) (designated informative on June 26, 2025). Order by Stewart, Acting Under Secretary of Commerce for Intellectual Property and Acting Director of...more

Jones Day

Delegated Rehearing Panel Sends Lifeline to Mercedes-Benz

Jones Day on

A Delegated Rehearing Panel (“DRP”) recently modified the PTAB’s construction of the claim term “workload” and remanded, giving Mercedes-Benz USA, LLC (“Petitioner”) another opportunity to challenge a processor patent....more

McDermott Will & Emery

Looks like estoppel, sounds like estoppel … but it’s just director discretion

McDermott Will & Emery on

The acting director of the US Patent & Trademark Office (PTO) granted a patent owner’s request for discretionary denial and denied institution of an inter partes review (IPR) proceeding, finding that the petitioner engaged in...more

Knobbe Martens

Coloring Within the Lines: The Genericness Test for Color Trademarks

Knobbe Martens on

IN RE: PT MEDISAFE TECHNOLOGIES - Before Prost, Clevenger, and Stark. Appeal from the Trademark Trial and Appeal Board. A proposed color mark was found generic where the relevant public perceived the color to be a common...more

McDonnell Boehnen Hulbert & Berghoff LLP

MSN Laboratories Private Ltd. v. Bausch Health Ireland Ltd. (Fed. Cir. 2025)

As has been noted recently (Agilent Technologies, Inc. v. Synthego Corp.), fact-based decisions from the U.S. Patent and Trademark Office (typically from the Patent Trial and Appeal Board) are reviewed under the substantial...more

Fish & Richardson

USPTO: No Bright-Line Rule on When Expectations Become Settled

Fish & Richardson on

On June 18, 2025, U.S. Patent and Trademark Office Acting Director Stewart issued a discretionary denial decision in Dabico Airport Solutions Inc. v. AXA Power ApS, granting the patent owner’s request for discretionary denial...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

U.S. IP Update – June 2025

Sterne Kessler’s U.S. IP Update is a newsletter delivering the latest developments in U.S. intellectual property law, tailored for companies and legal counsel in Korea. Stay informed on key court decisions, policy changes,...more

Jones Day

USPTO Acting Director Denies IPR Institution Based on "Settled Expectations"

Jones Day on

Under a new U.S. Patent and Trademark Office ("USPTO") policy issued in March 2025, pre-institution inter partes review ("IPR") proceedings are now bifurcated, consisting of a first phase in which the director considers...more

Irwin IP LLP

No Rhythm, No Review: USPTO Director Skips a Beat on IPRs. 

Irwin IP LLP on

iRhythm Technologies, Inc., v. Welch Allyn, Inc., IPR2025-00363, IPR2025-00374, IPR2025-00376, IPR2025-00377, IPR2025-00378 (P.T.A.B. June 6, 2025) - On June 6, 2025, United States Patent and Trademark Office (“USPTO”)...more

Baker Donelson

Insights from Month One of Acting Director Stewart's Decisions on Discretionary Denial under the New Interim Processes for PTAB...

Baker Donelson on

Just three months ago, Acting Director of the U.S. Patent and Trademark Office (USPTO) Coke Morgan Stewart rescinded existing guidelines governing the Patent Trial and Appeal Board's (PTAB) discretion to deny petitions for...more

ArentFox Schiff

USPTO Expands on ‘Settled Expectations’ as Basis for PTAB Discretionary Denials

ArentFox Schiff on

The US Patent and Trademark Office (USPTO) recently issued a Director Discretionary Denial decision expanding on the “settled expectations” ground for discretionary denial of a post-grant review proceeding...more

Vorys, Sater, Seymour and Pease LLP

New Settled Expectations Policy at the PTAB Augurs Major Practice Changes

In a startling development, Acting Director of the USPTO Coke Morgan Stewart has denied institution of an inter partes review (IPR) on the basis of “settled expectations,” on the sole ground that the subject patent had been...more

K&L Gates LLP

First Denial Based on USPTO’s New Discretionary Denial Factors

K&L Gates LLP on

Earlier this year, Chief Judge Boalick issued guidance on the USPTO’s recission of “Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation,” explaining how the Fintiv...more

Jones Day

PTAB Clarifies Interim Workload Management Process

Jones Day on

On April 17, 2025, following Acting Director Coke Morgan Stewart’s memorandum announcing a new interim process to manage the workload of all PTAB judges, the USPTO held a Boardside Chat outlining the new bifurcated process...more

Volpe Koenig

“Settled Expectations” as the New Gatekeeper for PTAB Discretionary Denials: Why Late-Stage IPRs Are Getting Harder to File

Volpe Koenig on

When Acting USPTO Director Coke Morgan Stewart denied institution in Dabico v. AXA Power IPR2025-00408  Paper 21, much of the commentary focused on the result....more

Fish & Richardson

Green Glove Trademark Application Gets Red Light From Federal Circuit

Fish & Richardson on

In a precedential decision, the U.S. Court of Appeals for the Federal Circuit recently blessed the test used by the U.S. Trademark Trial and Appeal Board (TTAB) for denying registration to PT Medisafe Technologies for a...more

Vinson & Elkins LLP

File Early or Risk Denial: iRhythm IPR Institution Denial Underscores the Importance of Filing IPR Petitions Sooner Rather Than...

Vinson & Elkins LLP on

On June 6, 2025, the Acting Director of the United States Patent and Trademark Office (“USPTO”), Coke Morgan Stewart, issued a decision denying institution of five inter partes review (“IPR”) petitions filed by iRhythm, Inc....more

Proskauer - The Patent Playbook

Discretionary Denials in Action: iRhythm Technologies Inc. v. Welch Allyn Inc.

The U.S. Patent and Trademark Office (“USPTO”) Acting Director’s recent decision to deny institution of inter partes review (“IPR”) in iRhythm Technologies Inc. v. Welch Allyn Inc. offers valuable lessons for both patent...more

Morgan Lewis

Meet the New Discretionary Denial Factor on the PTAB Block: Settled Expectations

Morgan Lewis on

USPTO Acting Director Coke Morgan Stewart recently issued a decision discretionarily denying five petitions for inter partes review (IPR) filed by iRhythm against patents owned by Welch Allyn based on a factor that had not...more

Volpe Koenig

When an IDS Comes Back to Haunt You: Lessons from iRhythm v. Welch Allyn

Volpe Koenig on

Patent attorneys are well-versed in the function of the Information Disclosure Statement (IDS) during prosecution. We understand that listing prior art in an IDS satisfies the duty of candor, helps insulate patents from...more

Jones Day

Applying Fintiv to a Parallel ITC Investigation

Jones Day on

The Patent Trial and Appeals Board (“PTAB”) recently denied institution of an inter partes review (“IPR”), exercising its discretion under 35 U.S.C. § 314(a)and Apple Inc. v. Fintiv Inc., IPR2020-00019 (PTAB Mar. 20, 2020)...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

Latest Director Discretionary Denial Decision in iRhythm Provides Valuable Insights

On June 6, 2025, Acting USPTO Director Stewart issued a decision in iRhythm Tech. v. Welch Allyn, Inc., IPR2025-00363, Paper 10 (and four related IPRs), which granted Patent Owner’s request for discretionary denial. This is...more

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