Patent Planet: July 2025

Thursday, July 31, 2025

PTAB - IPR Must Specify Where Prior Art Literature Discloses Each Claim Element - Effective September 1, 2025

The USPTO announced today:

"United States Patent and Trademark Office (USPTO) will enforce and no longer waive the requirement of 3 7 C.F.R. § 42.104(b)(4)(Rule 104(b)(4)) that a petition for inter partes review (IPR) must specify where each element of the claim is found in the prior art patents or printed publications relied upon.

As a practical matter, enforcement of Rule 104(b)(4) means that applicant admitted prior art (AAPA), expert testimony, common sense, and other evidence that is not prior art consisting of patents or printed publications (collectively, general knowledge) may not be used to supply a missing claim limitation.

Per 35 U.S.C. § 312(a)(4), the Board shall deny an IPR petition that fails to comply with Rule 104(b)(4).

General knowledge may still be used in an IPR to support a motivation to combine or to demonstrate the knowledge of a person having ordinary skill in the art."

See the USPTO memo for details. Another favorable policy change for patent owners.

Wednesday, July 23, 2025

PTAB - Patent Trial and Appeal Board Hearings Held in Person Absent Good Cause

Today, the USPTO announced:

"Patent Trial and Appeal Board (PTAB) hearings will be held in person. All parties will be expected to appear in person for hearings absent a showing of good cause. Good cause will generally be limited to circumstances such as financial hardship, medical emergencies, or other comparable obstacles to in-person attendance.

For all hearings scheduled on or after September 1:

A party may request to appear virtually for good cause.
The fact that one party is permitted to appear virtually does not establish good cause for other parties to do the same.
Hearings will be held at one of USPTO’s offices, and parties may request a specific office location for their hearing. PTAB will attempt to accommodate such requests.
Remote attendance will continue to be available to the public.
To access a hearing virtually or in person, submit a request to PTABHearings@uspto.gov at least three business days before the hearing.

For more information, visit the PTAB hearings webpage, contact PTABHearings@uspto.gov, or call 571-272-9797."

Parties will soon get to "discuss" site of hearing (e.g., Alexandria, VA v. San Jose, CA).

Monday, July 14, 2025

PTAB's Denial of US Patent Challenges Before Merits Considered - Summer 2025

As a follow up on my post on the new PTAB bifurcated process on April 14, PTAB recently denied several dozen US patent validity challenges before consideration of merit.

Professor Crouch's article, Timing is Everything: PTAB’s Renewed Reliance on Litigation Timelines and Patent Longevity covers this in detail.

I haven't read the PTAB denials, but an affected patent owner might check out the winning patent owner papers (e.g., Carmichael IP's papers). Professor Crouch suggests the denials are primarily based on (1) if the trial in district court is scheduled before PTAB's projected final written decision; and (2) a patent owner's settled expectation when US patent has not been challenged for years.

I expect a fight on the legitimacy of this denial before merits approach. The litigation timeline rationale seems defensible as challengers bear the blame for not filing an IPR "timely" in PTAB allowing patent owners a jury trial. In contrast, a patent owner's settled expectation rationale seems subject to factual dispute on what circumstances justify it.