Appeals

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When an alleged prior-art patent in an IPR claims priority to a provisional application, and the challenged patent claims priority to an intervening date between the provisional filing date and the non-provisional filing date of the reference patent, the burden is on the Petitioner to prove that the prior-Provisional Patent Applicationart patent is entitled to the filing date of its provisional application—by demonstrating that the claims of the reference patent are supported by the provisional application.
Continue Reading Petitioner Must Prove Reference Art Entitled to Filing Date of its Provisional Application.

Following oral argument in an appeal of an IPR in which the PTAB canceled a number of challenged claims and denied the Patent Owner’s motions to amend, the Federal Circuit requested additional briefing from the parties and the Director of the USPTO (Intervenor), concerning interpretation of the PTAB rule for filing motions to amend during an IPR, 37 CFR § 42.121. Microsoft Corp. v. Proxyconn, Inc., Case Nos. 2014-1542, -1543, Dkt. 49 (Fed. Cir. Apr. 13, 2015). The questions raised by the Federal Circuit panel suggest that the Court is likely to provide guidance on the PTAB’s claim amendment procedures when it issues its decision in the appeal.
Continue Reading Federal Circuit Expected to Provide Guidance on PTAB Claim Amendment Procedures

Resources & Info

Arthrex and the Supreme Court Resource Center

In United States v. Arthrex, Inc., the Supreme Court has heard whether 125+ PTAB decisions rendered through October 2019 must be remanded for new decisions. Read about how that issue developed through our post.

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Our Team

PTABWatch, provided by Marshall, Gerstein & Borun LLP, analyzes and reports recent developments concerning Post-Grant Proceedings at the Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office (USPTO), including Inter Partes Review (IPR), Post Grant Review (PGR), and Covered Business Method (CBM) proceedings.