Controversial Proposals Given Air Time at Year End
The U.S Senate Judiciary Committee will hold a hearing today entitled: “Reforming the Patent Trial and Appeal Board – The PREVAIL Act and Proposals to Promote U.S. Innovation Leadership.” The
PTAB Pre-institution Procedures Codified
The USPTO published an Notice of Proposed Rulemaking (NPRM) today relating to internal procedures. The proposed rules set forth that the Director is not involved prior to issuance (of a PTAB Decision on Institution) in
Leveraging Written Description Vulnerabilities in IPR
Bio/pharma patents are rarely targeted in IPR proceedings because their technical vulnerabilities often relate to written description and/or enablement. IPR, of course, is restricted in scope to only grounds of unpatentability that are based
CAFC: Success/Motivation Record Intertwined in Predictable Arts
As borne out by historical PTAB statistics, and not unexpectedly so, patents in the unpredictable arts are more likely to withstand PTAB scrutiny as compared to patents in the predictable arts. For
Boardside Chat This Thursday
The next Patent Trial and Appeal Board (PTAB) Boardside Chat webinar will be this Thursday, September 21, from noon to 1 p.m. ET. The Chat this month will be a discussion with in-house counsel on their
In-Person Hearings Should Not Require the Consent of an Adversary
Last week, the PTAB published an updated Oral Hearing Guide (here) to reflect current agency practices. The changes include rather mundane clarifications on such topics as public access
Claim Overlap Can be a Landmine for the Uninformed
Earlier this week the Federal Circuit decided In re Cellect, LLC, affirming the PTAB’s cancellation of claims for obviousness-type double patenting (ODP) over reference claims from earlier expiring patents in the
Amended Rule Moves Focus to Admissibility
Back in April the Supreme Court approved changes to FRE 702 (Expert Witness Testimony) that will take effect on December 1st. These changes clarify that the preponderance of evidence standard controls the evaluation
APA Safeguards Rebuttal Opportunity to New Claim Construction
A fundamental safeguard of the Administrative Procedure Act (APA) is the opportunity to be heard and to present evidence. Over the years the Federal Circuit has reminded the PTAB that parties must
Critical U.S Industry Depends on the PTAB – Not China
The so-called PREVAIL Act (here) was floated some weeks back to “to ensure the United States does not cede technological supremacy to our foreign competitors and adversaries.
