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…

Manual of Patent Examining and Procedure (MPEP) § 2106. Under these guidelines, assessing a claim’s eligibility involved three steps. First, the Office considers whether the claim covers a statutory category of processes, machines, manufactures, or compositions of matter. If so, the Office applies Alice’s two-step eligibility framework. Under “Step 2A,” the Office asks whether the claim is directed to an “abstract idea.” If not, the claim is patent-eligible. But if the claim is directed to an…

May was a relatively good month for patent owners at the PTAB.  The Patent Trial and Appeal Board issued 49 IPR and CBM Final Written Decisions, including decisions following remands from the Federal Circuit, cancelling 475 (67.95%) instituted claims while declining to cancel 224 (32.05%) instituted claims.  Patent owners did not concede any claims through motions to amend or disclaimer in cases reaching a final decision.  For comparison, the cumulative average rate of instituted claims…

Supplemental Examination has been in place for a few years now, (see Nyshadham, Burgy, Murphy, Lewis, and Irving, “AIA Supplemental Examination Nuts and Bolts: Get it in Your Toolbox and Don’t Leave Home Without It,” AIA Prosecution First blog post June 3, 2019) and it is interesting to see how some patent owners have used it and what results the procedure has provided. In Santos, Bosch, Leiman, Barker, Ward, Lewis, and Irving, “A Tale …