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Director Issues Guidance on Use of AI for Documents Submitted to PTAB

USPTO Director Katherine K. Vidal issued guidance on February 6, 2024 regarding the use of AI in drafting materials submitted to the USPTO’s administrative boards, including the PTAB. Of biggest concern in the guidance is...more

Disclaimer Made in IPR Not Binding In Same Proceeding

The Federal Circuit recently held, in Cupp Computing AS v. Trend Micro Inc., that a disclaimer in an inter partes review (IPR) proceeding is not binding on the USPTO in the same proceeding in which the disclaimer is made....more

Experts and Expert Testimony in PTAB Proceedings

In a recent Boardside Chat webinar, a panel made up of PTAB judges and practicing attorneys discussed the use of experts and expert testimony in American Invents Act (AIA) proceedings. The panelists stressed that...more

Spoonful of Commercial Success Overcomes Obviousness Rejection

The Patent Trial and Appeal Board (PTAB) recently reversed obviousness rejections based on an Applicant demonstrating commercial success of an infant spoon, in Ex Parte Doug Gonterman and Jessica Lineberry. The PTAB found...more

PTAB Denies IPR Institutions Without Patent Owner Rebuttal Evidence

It is no secret that the Patent Trial and Appeal Board (PTAB) often leverages its discretionary denial powers to deny inter parties review (IPR) petitions.  The PTAB has discretionarily denied IPR petitions, for example, due...more

Disclaimer Before Institution May Not Thwart PGRs

In Microsurgical Tech., Inc. v. Regents of the Univ. of Colorado, No. PGR2021-00026, Paper 12 (P.T.A.B. June 16, 2021), the Patent Trial and Appeal Board (“PTAB”) held that disclaimed claims should be considered for...more

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