Decision: Supplemental Examination No. 96/000,096 Holding: Some reexamined claims canceled, other amended claims survived. The surviving claims remain in doubt in view of a later covered business method review (CBM) proceeding. Background: Under the America Invents Act (“AIA”), supplemental examinations allow patent owners to ask the U.S. Patent and Trademark Office (“USPTO”) to consider, reconsider, or correct information potentially relevant a patent’s enforceability. 35 U.S.C. § 257(a). In requesting supplemental examination, the patent owner may present up…

On July 15, 2019, the U.S. Patent and Trademark Office (USPTO) released an update of certain sections of the Trial Practice Guide, providing further guidance on the rules governing AIA trial proceedings, also known as Patent Trial and Appeal Board (PTAB) trial proceedings. In a two-part summary, we highlight some of the more impactful updates set forth in the updated guide. This Part 2 summary covers: Motions to amend Motions for joinder Final decision Rehearing…

On July 15, 2019, the U.S. Patent and Trademark Office (USPTO) released an update of certain sections of the Trial Practice Guide, providing further guidance on the rules governing AIA trial proceedings, also known as Patent Trial and Appeal Board (PTAB) trial proceedings. In a two-part summary, we highlight some of the more impactful updates set forth in the updated guide. This Part 1 summary covers: Institution of trial Petition Preliminary response Discovery Jurisdiction and…