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PTABWatch

Focusing on the Patent Trial & Appeal Board of the US Patent & Trademark Office.

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Amendments

Satisfying the Duty of Disclosure in AIA TrialsRare Circumstances in IPRs are Even Rarer With Poor StrategyFitbit Dodges a Bullet—Entitled to Appeal Portion of Apple’s Petition Which It Did Not Join

Appeals

Timeless Expertise: Expert Testimony Precedent in Osseo ImagingNo Words, No Waiver: No Obligation to Request Rehearing to Preserve Issue for AppealGive Me ONE Reason: Federal Circuit Requires At Least One Reason for Motivation to Combine

Artificial Intelligence

PTAB Concludes Artificial Intelligence Medical Device Patent Is Not Obvious

Biotechnology

Timeless Expertise: Expert Testimony Precedent in Osseo ImagingPatent Interferences May Not Involve Pure AIA PatentThe Headaches in Claiming Antibody-based Inventions Broadly

CBM

Federal Circuit Finds Loyalty Rewards Claims IneligibleSupreme Court to Review the Arthrex DecisionDesignating Specific Storage Location for Ad Data Not Enough for Patentability

Claim Construction

Fed. Cir. Provides Insight on Conditional FeaturesNo Words, No Waiver: No Obligation to Request Rehearing to Preserve Issue for AppealPetitioners’ Replies May Respond to Newly Raised Claim Constructions

Covered Business Method

Federal Circuit Finds Lack of Enablement in Prior Art ReferenceSupreme Court to Review the Arthrex DecisionThe Arthrex Mulligan

Discovery

PTAB Should Have Determined that Gravity Feed Display Design Patent is ObviousPTAB Revises Trial Practice Guide To Reflect Recent Decisions On Claim Construction, Petition and Motion PracticePetitioner Has Burden of Persuasion on Real Party in Interest

Estoppel

Obvious Variants and the Hand of FateThis Seems Absurd, but …Rigidly Interpreting Precedents May Foreclose an Equitable Doctrine

Ex Parte

Federal Circuit Imperils Term-adjusted PatentsPTAB Updates and Expands the Director Review Process and Offers Transparency in Ex Parte AppealsPatent Interferences May Not Involve Pure AIA Patent

Institution / Denial

PTAB Updates and Expands the Director Review Process and Offers Transparency in Ex Parte AppealsOpinions Designated As Precedential Illuminate How Factors GoverningDenying a Stay and Building an Airplane While Flying It

Inter Partes Review

Federal Circuit uses Plain Language for Statutory Interpretation in Lynk LabsPTAB Provides Some Clarity on Artificial Intelligence (AI) Obviousness in IPR DecisionCourt Limits Collateral Estoppel Based on PTAB Decisions

Interferences

Patent Interferences May Not Involve Pure AIA PatentMine Your Patent Application and You Might Find a LicenseeHaste Makes Waste?

IPR

Federal Circuit Abandons Rosen-Durling Test for Design Patent ObviousnessFederal Circuit Holds Recoverability of Attorney’s Fees Does Not Extend to AIA TrialsFederal Circuit to Decide Whether KSR Applies to Design Patents

Joinder

Fitbit Dodges a Bullet—Entitled to Appeal Portion of Apple’s Petition Which It Did Not JoinFederal Circuit Nixes PTAB’s Same-party and New Issue Joinder PrecedentCAFC Hears IPR Appeal From Parties That Were Time-Barred From Filing Petition

Legislation

Patentee’s Admissions of Obviousness Insufficient Basis for Cancellation in Inter Partes Review"Comments Anyone?": PTO Makes Proposed New IPR Amendment ProcessProposed Hatch-Waxman Amendment Would Effectively Eliminate IPR Challenges by Generics

Machine Learning

PTAB Concludes Artificial Intelligence Medical Device Patent Is Not Obvious

Obviousness

Federal Circuit uses Plain Language for Statutory Interpretation in Lynk LabsPTAB Provides Some Clarity on Artificial Intelligence (AI) Obviousness in IPR DecisionCourt Limits Collateral Estoppel Based on PTAB Decisions

Post Grant Review

PTAB Updates and Expands the Director Review Process and Offers Transparency in Ex Parte AppealsPatent Office Proposes Increasing AIA Trial FeesPTAB Invalidates GUI, but Leaves Obviousness Test Gooey

Printed Publication

POP Hits a SoftballWhat Qualifies As Prior Art?Trade Show Publication Dooms Patent in IPR Appeal Despite Contrary Decision in ITC Appeal

PTAB

Federal Circuit uses Plain Language for Statutory Interpretation in Lynk LabsPTAB Provides Some Clarity on Artificial Intelligence (AI) Obviousness in IPR DecisionGive Me ONE Reason: Federal Circuit Requires At Least One Reason for Motivation to Combine

Real Party-in-Interest

Time Bar Challenge Must Be Raised before the Board, Not Saved for AppealPetitioner Has Burden of Persuasion on Real Party in InterestSuccessful IPR Petition Time Barred Under 35 U.S.C. §315(b) by Involuntarily Dismissed Complaint

Reexamination

Federal Circuit Imperils Term-adjusted PatentsPTAB Updates and Expands the Director Review Process and Offers Transparency in Ex Parte AppealsPatent Interferences May Not Involve Pure AIA Patent

Section 101

Federal Circuit Finds Loyalty Rewards Claims IneligibleSo Long, and Thanks for All the FishFederal Circuit Reaffirms that Software is Patent Eligible

Section 112

Mine Your Patent Application and You Might Find a LicenseeCome on, Board, Finish What You StartedIs the Written Description Requirement a Nose of Wax?

Sections 102/103

Fed. Cir. Provides Insight on Conditional FeaturesNo Words, No Waiver: No Obligation to Request Rehearing to Preserve Issue for AppealFederal Circuit Abandons Rosen-Durling Test for Design Patent Obviousness

Stays

Denying a Stay and Building an Airplane While Flying ItDoes Section 285 Permit an Award of Attorney’s Fees for Patent Office Proceedings?The Arthrex Mulligan

Trial Procedures

Timeless Expertise: Expert Testimony Precedent in Osseo ImagingPTAB Updates and Expands the Director Review Process and Offers Transparency in Ex Parte AppealsNo Weight for Unsupported Expert Witness Testimony

U.S. Court of Appeals for the Federal Circuit

Give Me ONE Reason: Federal Circuit Requires At Least One Reason for Motivation to Combine
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.

Learn more

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.

PTABWatch

Focusing on the Patent Trial & Appeal Board of the US Patent & Trademark Office.

See Our Tech Patent Blog
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