Summary The PTAB recently published its first-ever final written decision in a derivation proceeding, which allows a patent to be challenged as being derived from the true inventor. The decision found no derivation, and touched on several issues: The Board applied the preponderance of the evidence standard, now used for PTAB trials. The Board identified […]
The Patent Trial and Appeal Board (PTAB) has been busy, designating three decisions as precedential on Monday after designating two decisions as precedential earlier this month. Two of the decisions involve the substantive and procedural limitations of testimony during oral argument. The third decision addresses which invalidity grounds may be raised in challenging motions to […]
The US Patent and Trademark Office (USPTO) implemented a new pilot program on March 15, 2019 concerning motion-to-amend practice in America Invents Act (AIA) trials, including post-grant review (PGR), inter partes review (IPR), and covered business method review (CBM) proceedings before the Patent Trial and Appeal Board (the Board). Traditionally, a Patent Owner has been […]
The PTAB designated as precedential a recent order regarding Motions to Amend. Lectrosonics, Inc. v. Zaxcom, Inc., Case IPR2018-01129, 01130, Paper 15 (Feb. 25, 2019) (Designated Precedential: Mar. 7, 2019). The order sets out the requirements and burden for motions to amend under 35 U.S.C. § 316(d). Notably, Scott Boalick, acting Chief Administrative Patent Judge, […]
In SAS Institute Inc. v. Iancu, Director, United States Patent and Trademark Office. 138 S.Ct. 1348 (2018) (“SAS”) the Supreme Court held that an inter partes review (“IPR”) must rule on each claim and each ground challenged by the petitioners. In an opinion written by Justice Gorsuch, the Court explained that the language of the […]
The Federal Circuit on Nov. 9, 2018 held that assignor estoppel does not apply to IPRs: Arista Networks, Inc. v. Cisco Sys., Inc., No 17-1725, slip. Op. at 17-23 (Fed. Cir. Nov. 9, 2018.) The Court held: “We conclude that Section 311(a) [of the Patent Act], by allowing a ‘person who is not the owner […]
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