An important set of factors the Patent Trial and Appeal Board considers when deciding whether to institute inter partes review concerns the filing of multiple petitions challenging the same patent. Part I of this two-part...more
In view of the increasing number of petitions for inter partes review filed before the Patent and Trial Appeal Board since its inception more than six years ago, the PTAB has increased its scrutiny of so-called “serial”...more
The USPTO has issued updated guidance for examiners and administrative patent judges (APJs) relating to subject matter eligibility under 35 U.S.C. 101 and examining computer-implemented functional claim limitations under 35...more
1/11/2019
/ Abstract Ideas ,
Administrative Patent Judges ,
Alice Corporation ,
Claim Construction ,
Computer-Related Inventions ,
Guidance Update ,
Mayo v. Prometheus ,
Means-Plus-Function ,
Patent-Eligible Subject Matter ,
Patents ,
Section 101 ,
USPTO
In the U.S. Court of Appeals for the Federal Circuit’s recent en banc decision in Aqua Products, a deeply fractured court provides a glimpse into the perspectives that some of the judges have on post-grant practice at the...more
11/21/2017
/ Appeals ,
Burden of Persuasion ,
Burden of Production ,
Burden of Proof ,
Chevron Deference ,
Claim Amendments ,
Inter Partes Review (IPR) Proceeding ,
Motion to Amend ,
Patent Ownership ,
Patent Trial and Appeal Board ,
Patents ,
Post-Grant Review ,
Remand ,
USPTO
The most recent Patent Trial and Appeals Board rule changes, effective May 2, 2016, allow petitioners to seek leave to file a reply to a patent owner preliminary response upon a showing of good cause. Amendments to the Rules...more
As a result of recent changes in the PTAB rules of practice, counsel for patent owners should consider whether there are opportunities to identify factual deficiencies in petitions. Counsel for petitioners in inter partes...more
The United States Patent and Trademark Office has used a “broadest reasonable interpretation” (BRI) standard for claim interpretation when examining pending patent applications. Under the BRI standard, a claim term is...more
4/29/2016
/ Amended Regulation ,
America Invents Act ,
Broadest Reasonable Interpretation Standard ,
Claim Construction ,
Cuozzo Speed Technologies v Lee ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Phillips Standard ,
Post-Grant Review ,
Prior Art ,
USPTO