Speculation Insufficient To Justify Routine Discovery
By Sue Gerber and Matt Johnson The PTAB has discretion to permit “routine discovery” under 37 C.F.R. §42.51(b)(1)(iii) when that discovery “is narrowly directed to specific information known to the responding party to be inconsistent with a position advanced by that...
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Indefiniteness Again Leads To Unsuccessful IPR Challenge
By T. Kaitlin Crowder, John Marlott, and Dave Cochran The PTAB may institute IPR proceedings only on the basis of certain prior art that is potentially invalidating under § 102 (novelty) or § 103 (obviousness). The PTAB may not institute IPR on any other...
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Board Terminates Motion to Amend, Citing Inefficient Use of Resources
By Albert Liou The Board recently exercised its discretion to terminate trial and obviate the Patent Owner’s pending Motion to Amend, after the Federal Circuit affirmed a district court’s ruling that all of the challenged claims were invalid for lack of patentable...
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PTAB Claim Construction Final Rule Announced
The USPTO has published a final rule changing the claim construction standard applied during inter partes review (IPR), post-grant review (PGR), and the transitional program for covered business method patents (CBM) proceedings before the PTAB. The final rule replaces...
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PTAB: Institution Decision Addressing Only One Claim Acceptable Post-SAS
By: Geoffrey K. Gavin and Matthew Johnson – In response to a request for rehearing, the PTAB addressed whether the Board must address each claim and each ground in an institution decision Post-SAS.
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