IP Hot Topic: 2021 PTAB Year in Review: Analysis & Trends

Sterne, Kessler, Goldstein & Fox is proud to announce the publication of the 2021 PTAB Year in Review: Analysis & Trends. This report, now in its second edition, explores the USPTO Patent Trial and Appeal Board’s (PTAB) evolution with a particular focus on the interface between district court and PTAB litigation through a series of articles analyzing the most significant developments that occurred over the past year.

In this edition, the authors review Fintiv and Section 325(d) denials, nuanced Section 112 issues, antedating references, motions to amend, and dealing with “bad behavior” by experts. The report also analyzes industry-specific issues related to biologics, chemicals, and standard essential patents (SEPs). The report concludes with examining ex parte reexaminations, which have recently moved back to center stage.

The full publication, 2021 PTAB Year in Review: Analysis & Trends, and the individual articles are available on the firm’s website here in HTML and PDF formats. Additionally, please be on the lookout for our upcoming PTAB webinars.

Table of Contents

• Introduction
• Data & Trends
• Fintiv Continues To Take Center Stage
• Discretionary Denial under § 325(d): Strategic Implications of the PTAB’s Advanced Bionic Framework
• Developments in Antedating Asserted Art at the PTAB
• Case Studies and Trends at the PTAB Involving 35 U.S.C. § 112
• Expert Bad Behavior: The Problem and Potential Solutions
• IPR Estoppels: A Power Imbalance for Plaintiffs and Defendants
• Evidentiary Issues When Leveraging the Records in Parallel Proceedings Involving the PTAB
• Interplay Between PTAB Proceedings and Recovery in District Court
• A Niche Within a Niche: The PTAB’s Evolving Motion to Amend Practice
• The Resurgence and Perils of Ex Parte Reexaminations
• Biologics at the PTAB: Statistics and Insights into Notable Biologics Decisions
• Is the Tide Turning on Chemical Patent Challenges at the PTAB?
• Standard Essential Patents at the PTAB: Are SEPs Faring any Differently than non-SEPs? – Impacts and Analysis