37 C.F.R. § 42.4
Notice of trial
(a) Institution of trial. The Board institutes the trial on behalf of the Director.
(b) Notice of a trial will be sent to every party to the proceeding. The entry of the notice institutes the trial.
(c) The Board may authorize additional modes of notice, including:
(1) Sending notice to another address associated with the party, or
(2) Publishing the notice in the Official Gazette of the United States Patent and Trademark Office or the
Notes of Decisions
Cited in 58
cases (13 in the last 5 years), 2014–2026 · leading case: Aqua Prods., Inc. v. Matal, 872 F.3d 1290 (Fed. Cir. 2017).
Aqua Prods., Inc. v. Matal, 872 F.3d 1290 (Fed. Cir. 2017). “A panel of the Patent Trial and Appeal Board, exercising authority delegated by the PTO’s Director, 37 C.F.R. §§ 42.4 , 42.108, instituted review of claims 1–9, 13, 14, 16, and 19–21.”
Ethicon Endo-Surgery, Inc. v. Covidien Lp, 812 F.3d 1023 (Fed. Cir. 2016). “”); 37 C.F.R. § 42.4 (a) (stating that the “Board institutes the trial on behalf of the Director”).”
SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348 (2018). “(In practice, the agency’s Patent Trial and Appeal Board exercises this authority on behalf of the Director, see 37 CFR §42.4 (a) (2017).) Before instituting review, the Director must determine, based on the parties’ papers, “that there is a reasonable likelihood that the…”
Cuozzo Speed Tech., LLC v. Lee, 195 L. Ed. 2d 423 (2016). “See 37 CFR §§42.4 (a), 42.108 (2015); 35 U. S.”
Synopsys, Inc. v. Mentor Graphics Corp., 814 F.3d 1309 (Fed. Cir. 2016). “§ 314 (a); 37 C.F.R. § 42.4 (a). The PTO has adopted a regulation allowing the Board to initiate inter partes review “on all or some of the challenged claims.”
Wi-Fi One, LLC v. Broadcom Corp., 878 F.3d 1364 (Fed. Cir. 2018). “37 C.F.R. §§ 42.4 (a), 42.108. We have held this 8 WI-FI ONE, LLC v.”
Ethicon Endo-Surgery, Inc. v. Covidien Lp, 826 F.3d 1366 (Fed. Cir. 2016). “Ignoring this statutory division of responsibilities, the PTO has assigned the institution decision to the PTAB, 37 C.F.R. § 42.4 (a). Under current practice, the same administrative patent judges responsible for instituting an IPR preside over the merits trial.”
Versata Dev. Grp., Inc. v. SAP Am., Inc., 793 F.3d 1306 (Fed. Cir. 2015). “§ 326 (c); 37 C.F.R. § 42.4 (2014). Turning to the merits, the PTAB, in its final written decision, held Versata’s CBM patent claims 17 and 26–29 unpatentable under 35 U.”
United States v. Arthrex, Inc., 594 U.S. 1 (2021). “37 CFR §42.4 (a) (2020). The Director designates at least three members of the PTAB (typically three APJs) to conduct an inter partes pro- ceeding.”
Return Mail, Inc. v. United States Postal Serv., 868 F.3d 1350 (Fed. Cir. 2017). “37 C.F.R. §§ 42.4 (a), 42.300(a). If review is instituted, the parties then proceed to the second stage, which involves discov- ery, the submission of additional information, and the opportunity for an oral hearing.”
Thryv, Inc. v. Click-To-Call Tech., LP, 140 S. Ct. 1367 (2020). “37 CFR § 42.4 (a) (2019). As just noted, the federal agency's "determination .”
Arthrex, Inc. v. Smith & Nephew, Inc., 941 F.3d 1320 (Fed. Cir. 2019). “” 37 C.F.R. § 42.4 (a). 2 The Board consists of “[t]he Director, the Deputy Director, the Commissioner for Patents, the Commissioner for Trademarks, and the administrative patent judges.”
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