By Thomas J. Kowalski, Vicki G. Norton, Ph.D., Jarrad M. Gunther and Brandon A. Chan, Ph.D. In defending against allegations of patent infringement, there are numerous avenues to invalidating an asserted patent or rendering it unenforceable. Invalidity contentions can include asserting that
PTAB Practice
The PTAB Practice blog, published by Duane Morris LLP, focuses on legal developments and procedural issues related to the Patent Trial and Appeal Board (PTAB). It covers topics such as inter partes review (IPR) proceedings, motions to amend patent claims, discretionary powers of the PTAB in instituting reviews, and the impact of precedential opinions on America Invents Act (AIA) reviews. The blog provides analysis of PTAB decisions, procedural changes, and strategic considerations for patent owners and petitioners involved in PTAB proceedings.
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PTAB Confirms Petitioners Must Make Two Distinct Showings to Prove a Primary Patent Reference’s Entitlement to a Provisional Application’s Filing Date
In a January 27, 2022 non-precedential decision in IPR2021-01328, the Patent Trial and Appeal Board (“PTAB”) denied institution of an inter partes review (“IPR”) proceeding because the petitioner failed to prove that the primary patent reference was prior art to…
Now in Effect – PTAB’s New Motion to Amend Procedures
Overview As recently noticed in the Federal Register, the Patent Trial and Appeal Board’s (PTAB or Board) new motion to amend (MTA) procedures are now in effect as a one-year pilot program. [1] In sum, the patent owner (PO) now has…
Law of the Case? Not in our Forum! Continuing Trend of PTAB Aggressively Using Its Discretionary Powers to Deny Institution of IPRs
By statute, Congress gave the Patent Trial and Appeal Board (“PTAB”) broad discretionary power in deciding whether or not to institute an inter partes review (“IPR”) proceeding.[1] Recently, the PTAB’s application of this discretionary authority to deny IPR petitions has…
PTAB’s Two Precedential Opinions and Impact of Previous Proceeding on AIA Reviews
The Patent Trial and Appeal Board (PTAB) recently designated two opinions as precedential, which are two of the only three precedential opinions in America Invents Act (AIA) reviews up to today. The precedential status means that these opinions are binding…