The Patent Trial and Appeal Board’s (PTAB) obstacles to successful motions to amend have been daunting. As published previously, filing motions to amend have historically been an exercise in futility due to their low chance...more
8/6/2020
/ Administrative Procedure ,
Due Process ,
Inter Partes Review (IPR) Proceeding ,
Litigation Strategies ,
Motion to Amend ,
Notice Requirements ,
Oral Hearings ,
Patent Litigation ,
Patent Owner Preliminary Response ,
Patent Trial and Appeal Board ,
Patents ,
PTAB Precedential Opinion Panel (POP) ,
Sua Sponte
Despite changing claim construction to district court standard, where BRI had always been premised on the patent owners ability to amend, it appears the USPTO is responding to a half-decade of negative comments from the...more
A recent trend at the PTAB has shown timing is everything, and bad timing is held against Petitioner when considering discretionary denial....more
Measure twice cut once – the same can be said of the Petition in American Invents Act (“AIA”) proceedings. Time and again the Board and Federal Circuit[i] have used the Administrative Procedure Act[ii] (“APA”) – guaranteeing...more
8/24/2018
/ Administrative Procedure Act ,
America Invents Act ,
Appeals ,
Evidence ,
Inter Partes Review (IPR) Proceeding ,
Litigation Strategies ,
Patent Infringement ,
Patent Owner Preliminary Response ,
Patent Trial and Appeal Board ,
Patents ,
Pleadings ,
Rebuttal ,
Trial Practice Guidance
You selected your experts – Ms. Boot (an expert for the patent owner, SneakRTech) and Dr. Slipper, PhD (an expert for the Petitioner, BadGuys) - to assist SneakRTech at the PTAB in cases involving aglet patents against...more
7/24/2018
/ Administrative Proceedings ,
Claim Construction ,
Cross Examination ,
Declaration ,
Expert Witness ,
Litigation Strategies ,
Noninfringement ,
Patent Infringement ,
Patent Owner Preliminary Response ,
Patent Ownership ,
Patent Trial and Appeal Board ,
Patent-Eligible Subject Matter ,
Patents
The Board has moved the 103 target without warning.
As noted in last month’s article on POPR (Patent Owner Preliminary Response) declarations, the Board is using POPR declarations to deny institution for lack of motivation...more
On Friday, March 9, 2018, more than 50 participants at Sterne Kessler’s inaugural Global IP Strategy Conference discussed the PTAB’s reliance on expert declarations at the institution phase. The Board is relying on these...more
As first discussed with the 50+ participants at the inaugural Global IP Strategy Conference held at our firm’s offices on Friday March 9, 2018, the Federal Circuit’s October en banc decision in Aqua Products Inc. v. Matal...more