The PTAB Strategies and Insights newsletter provides timely updates and insights into how best to handle proceedings at the USPTO. It is designed to increase return on investment for all stakeholders looking at the entire...more
7/31/2020
/ Administrative Procedure ,
Appeals ,
Inter Partes Review (IPR) Proceeding ,
Motion to Amend ,
Nonobvious ,
Patent Trial and Appeal Board ,
Patent-Eligible Subject Matter ,
Patents ,
Precedential Opinion ,
PTAB Precedential Opinion Panel (POP) ,
Substitute Claims ,
USPTO
Henny Penny petitioned for inter partes review (IPR) of Frymaster’s U.S. Patent 8,497,691. The ’691 patent relates to deep fryers and describes a system for measuring the state of cooking oil degradation with a “total polar...more
In 2019, the U.S. Court of Appeals for the Federal Circuit docketed just over 650 appeals from the U.S. Patent and Trademark Office (USPTO). That is the highest number since the Court started to hear post-American Invents Act...more
As PTAB practitioners know, statistics on successful motions to amend are quite dismal. But in a recent case, the PTAB shed light on what may be a successful strategy for patent owners to amend their claims in an Inter Partes...more
1/3/2020
/ Claim Amendments ,
Inter Partes Review (IPR) Proceeding ,
Litigation Strategies ,
Motion to Amend ,
Nexus ,
Nonobvious ,
Patent Infringement ,
Patent Invalidity ,
Patent Litigation ,
Patent Ownership ,
Patent Trial and Appeal Board ,
Patents
The PTAB Strategies and Insights newsletter provides timely updates and insights into how best to handle proceedings at the USPTO. It is designed to increase return on investment for all stakeholders looking at the entire...more
Experienced PTAB practitioners know that, in an IPR, assuming each claim element is in the asserted prior art, the rubber meets the road on the reason-to-combine arguments. In Henny Penny Corp. v. Frymaster, LLC, the Federal...more
10/4/2019
/ Alternative Pleadings ,
America Invents Act ,
Appeals ,
Inter Partes Review (IPR) Proceeding ,
Nonobvious ,
Obviousness ,
Patent Litigation ,
Patent Owner Preliminary Response ,
Patent Trial and Appeal Board ,
Patents ,
Reaffirmation ,
Responsive Pleadings
The PTAB Strategies and Insights newsletter provides timely updates and insights into how best to handle proceedings at the USPTO. It is designed to increase return on investment for all stakeholders looking at the entire...more
Experienced PTAB practitioners know that the Board rarely grants motions to exclude evidence in Post Grant proceedings. In this article, we look beyond the grim anecdotes and provide some statistics, as well as the Board’s...more
The PTAB Strategies and Insights Newsletter is designed to be a valuable resource for all stakeholders in the global patent arena throughout the patent life cycle. To that end, articles will provide perspectives from both...more
On November 16, 2017 the U.S. Patent and Trademark Office posted a new Standard Operating Procedure (SOP) addressing the conduct of cases remanded from the Federal Circuit to the Patent Trial and Appeal Board (PTAB). New “SOP...more
The Perspectives on the PTAB Newsletter is designed to be a valuable resource for all stakeholders in the global patent arena throughout the patent life cycle. To that end, articles will provide perspectives from both sides...more
On November 16, 2017 the U.S. Patent and Trademark Office posted a new Standard Operating Procedure (SOP) addressing the conduct of cases remanded from the Federal Circuit to the Patent Trial and Appeal Board (PTAB). New “SOP...more
11/17/2017
/ Additional Discovery ,
Administrative Hearings ,
Administrative Procedure ,
Admissible Evidence ,
Appeals ,
Appellate Briefs ,
CAFC ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Proposed Rules ,
Remand ,
Standard Operating Procedures
The Federal Circuit’s recent decision in Shaw Industries Group, Inc. v. Automated Creel Systems, Inc., has shed some light on the estoppel provisions in America Invents Act (AIA) post-grant proceedings. Like the estoppels in...more
We are pleased to share this Perspectives on the PTAB newsletter. Its content is directed toward providing information and analysis of the decisions made by the Patent Trial and Appeal Board. We hope that this newsletter...more
7/8/2016
/ Admissible Evidence ,
America Invents Act ,
Appeals ,
Covered Business Method Proceedings ,
Declaration ,
Estoppel ,
Evidence ,
Expert Witness ,
Inter Partes Review (IPR) Proceeding ,
Patent Infringement ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Post-Grant Review
On August 20th, the U.S. Patent and Trademark Office published proposed rules that would amend the consolidated set of rules currently governing Inter Partes Reviews, Post-Grant Reviews, Covered Business Method Reviews, and...more
8/26/2015
/ Attorney-Client Privilege ,
Broadest Reasonable Interpretation Standard ,
Covered Business Method Proceedings ,
Discovery ,
Duty of Candor ,
Evidence ,
Inter Partes Review (IPR) Proceeding ,
Joinder ,
Motion to Amend ,
Patent Owner Preliminary Response ,
Patent Ownership ,
Patents ,
Pleadings ,
Post-Grant Review ,
Proposed Amendments ,
Testimony ,
USPTO