Tag Archives: PTAB

USPTO Joins Other National Patent Offices by Extending Filing and Fee Deadlines in Response to COVID-19

The recent passage of the massive Coronavirus Aid, Relief, and Economic Security (“CARES”) Act by Congress authorized the United States Patent and Trademark Office (“USPTO”) to temporarily adjust its statutory time periods for replies and fees to help applicants file during the COVID-19 outbreak. With countless individuals and businesses significantly impacted by the growing pandemic, … Continue Reading

PTAB Appellants May Improve Outcomes by Filing Supplemental Expert Declarations

On November 25, 2019, the Patent Trial and Appeal Board (PTAB) of the United States Patent and Trademark Office (USPTO) affirmed an appeal from IBM that its invention fails to recite patent-eligible subject matter under 35 U.S.C. §101. U.S. Patent Application Number 15/212,216 claimed a method for mining threaded online discussions, where an information handling … Continue Reading

PTAB Trial Practice Guide Update Codifies Recent PTAB Decisions and Procedure (Third and Last of a Series)

Introduction In two recent articles (see parts one and two of series), we discussed several aspects of a July 2019 Update that the Patent Trial and Appeal Board (PTAB) issued to the PTAB Trial Practice Guide.[i]  This article completes that discussion, addressing motions for joinder, and procedures regarding remands and the PTAB’s default protective order. 1. Motions for joinder … Continue Reading

PTAB Trial Practice Guide Update Codifies Recent PTAB Decisions and Procedure (Second of a Series)

Introduction In a recent article, we discussed several aspects of a July 2019 Update that the Patent Trial and Appeal Board (PTAB) issued to the PTAB Trial Practice Guide.[1]  This article continues that discussion, addressing institution decisions on multiple petitions, and motions to amend. 1. Multiple petitions challenging the same patent The July 2019 Update … Continue Reading

PTAB Trial Practice Guide Update Codifies Recent PTAB Decisions and Procedure (First of a Series)

Introduction In July 2019, the Patent Trial and Appeal Board (PTAB) issued an Update to the PTAB Trial Practice Guide.[i]  The July 2019 Update documents practices and procedures that the PTAB has found useful, and in some instances, summarizes or repeats practices and procedures from precedential PTAB opinions. The US Patent and Trademark Office’s announcement … Continue Reading

Federal Circuit Rejects Requirement That Patent Owners Have the Burden to Prove the Patentability of Amended Claims Proffered During Inter Partes Review Proceedings

The Federal Circuit has issued its long-awaited ruling in Aqua Products, Inc. v. Matal, No. 2015-1177, with the majority of the en banc court agreeing that the requirement by the Patent Trial and Appeal Board (PTAB) that patent owners have the burden to prove the patentability of amended claims proffered during inter partes review (IPR) … Continue Reading

Patent Trial and Appeal Board Reverses Subject Matter Eligibility Rejections Based on Incomplete Analysis

Last week, the Patent Trial and Appeal Board (“Board”) issued two decisions reversing final rejections under 35 U.S.C. § 101. Rather than performing an in-depth analysis of the claimed subject matter, the Board based these reversals on an incomplete subject matter eligibility analysis by the examiner. These appeals originated from Art Unit 3690, which focuses … Continue Reading

Is the Broadest Reasonable Interpretation of Claim Terms, as Applied in Inter Partes Review, Converging on the Standard Applied in Litigation?

This past summer, the Supreme Court settled the debate about the standard to be applied by the Patent Trial and Appeal Board (PTAB) in construing patent claims – finding its use of the broadest reasonable interpretation (BRI), the approach used by the US patent office for the past century, was proper.1 Its decision left in … Continue Reading
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