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 37 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 PTAB policy change for patent owners. 

Copyright © 2025 Robert Moll. All rights reserved. 

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 the PTAB denials 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.  

Copyright © 2025 Robert Moll. All rights reserved. 

PTAB - USPTO Issues New Interim Process Concerning Institution of AIA Proceedings

The USPTO announced how future AIA trials will be conducted today: 

"New paper types available for patent owners and petitioners in Patent Trial and Appeal Case Tracking System. Under the new Interim Processes for Patent Trial and Appeal Board (PTAB) Workload Management announced on March 26, 2025, the parties to an America Invents Act (AIA) trial proceeding may file separate briefings on discretionary considerations relevant to institution. Specifically, a patent owner may file a discretionary denial brief, and a petitioner may file an opposition to that brief. 

To help the USPTO efficiently address such filings, the PTAB introduces two new paper types in the Patent Trial and Appeal Case Tracking System (P-TACTS):

PO Discretionary Denial Brief

PET Opposition to Discretionary Denial Brief

The patent owner (PO) may file the PO Discretionary Denial Brief after the PTAB issues a Notice of Filing Date Accorded (or a Notice of Defective Petition) and the PTAB accepts the patent owner’s Mandatory Notice. The petitioner (PET) may file the PET Opposition to Discretionary Denial Brief in P-TACTS after the patent owner files a discretionary denial brief. 

Instructions for filing briefs in P-TACTS will soon be available on the PTAB’s FAQs webpage.

To select the new PO Discretionary Denial Brief paper type, the patent owner should select the “File Other Document” modal under the “+Add Document” drop-down menu in the case viewer. In the “File Other Document” modal, the “PO Discretionary Denial Brief” will be a choice in the paper type drop-down menu.

The petitioner should file its PET Opposition to Discretionary Denial Brief in the same way as described above for the patent owner, except that the petitioner should select “PET Opposition to Discretionary Denial Brief” in the drop-down menu under the “File Other Document” modal.

It is important for the parties who file briefing on discretionary considerations in AIA trial proceedings to select the appropriate paper types to enable proper case management in P-TACTS.

For more information about the new Interim Processes for PTAB Workload Management, register to attend the upcoming Boardside Chat on Thursday, April 17. Email Trials@uspto.gov or call 571-272-7822 if you have any questions."

Copyright © 2025 Robert Moll. All rights reserved.