Valve Precedent Reined In by Director Review Order
Last week the Director vacated IPR denials based upon a misapplication of Valve Corp. v. Elec. Scripting Prods., Inc., IPR2019-00062, Paper 11 (Apr. 2, 2019) (precedential). As a reminder, Valve, extended
Boardside Chat Thursday
The PTAB will conduct its next Boardside Chat webinar this Thursday, March 21st, from noon to 1 p.m. ET, to discuss hearings before the Board. The presentation will include a virtual tour of the hearing rooms, along
USPTO Issues NPRM to Codify Amendment Pilot Permanent
While awaiting the overdue Notice of Proposed Rulemaking (NPRM) on the hodgepodge of proposals from last year, the agency has issued a few NPRMs over the past week. First was a
ANPRM an Unnecessary Slog to a Small Rule Package
It has been almost a year since the Patent Trial & Appeal Board (PTAB) released its Advanced Notice of Proposed Rulemaking (ANPRM) on AIA trial practices. As a reminder, the ANPRM
Post-Amgen Claiming Techniques in Focus
Last year’s landmark decision in Amgen V. Sanofi emphasized that “the more a party claims, the broader the monopoly it demands, the more it must enable.” That is, particularly when claiming a broad genus of
Common AIA Issues Discussed
This coming Thursday January 18th (noon to 1 p.m. (EST)) the PTAB will host its first Boardside Chat of the year. The program will discuss issues that typically arise during an America Invents Act (AIA) proceeding
Avoiding Cellect
The Federal Circuit’s In re Cellect ruling has significant implications for patent portfolios, emphasizing the need for careful planning to avoid obviousness-type double patenting (OTDP) that could compromise statutory term and patent validity. Particularly, patents with patent term
Latent OTDP Issues & Litigation
The Federal Circuit’s decision in In re Cellect clarified that patenting obvious variants of the same invention across multiple patents—Obvious-Type Double Patenting (OTDP)—can result in the elimination/reduction of Patent Term Adjustment (PTA). OTDP was fatal
Claim-Based Analysis Required for Pre-AIA Patents Only
One of the more confusing developments in patent law was pronounced in Dynamic Drinkware v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). In Dynamic the Court held that a provisional
Internal Procedures Discussed
The U.S. Patent and Trademark Office (USPTO) issued a Notice of Proposed Rulemaking (NPRM) on the Patent Trial and Appeal Board’s (PTAB) pre-issuance internal decision circulation and review last month. The PTAB also issued a new Standing
