by John Marlott | Jan 5, 2023 | Amendment Practice, PTAB News, PTAB Trial Basics
By Sachin Patel and John Marlott – The Federal Circuit has upheld the PTAB’s relatively liberal approach to proposed claim amendments in an IPR, holding that so long as a proposed substitute claim includes an amendment made in response to an...
by John Marlott | Oct 6, 2022 | Amendment Practice, PTAB News
By John Marlott – The United States Patent and Trademark Office (USPTO) has again extended the Motion to Amend (MTA) Pilot Program at the Patent Trial and Appeal Board (PTAB). The MTA Pilot Program provides a patent owner who files a motion to amend in a trial...
by John Marlott | Dec 28, 2021 | PGR, PTAB News
By John Marlott – PGR petition filings were up slightly over the prior USPTO fiscal year, but the long-term historical trend continues to show that PGR challenges remain relatively infrequent. We recently reported on the PTAB’s release of its final statistics...
by John Marlott | Jun 4, 2021 | Estoppel, PGR
By John Marlott – A Post-Grant Review can be used to challenge newly-issued patents on wide-ranging grounds, but PGRs remain relatively unpopular: statutory estoppel may be a reason why. The America Invents Act (“AIA”) created new procedures for challenging the...
by John Marlott | Jan 13, 2021 | PTAB Trial Basics
By John Marlott and Nick Bagnolo – In post-grant proceedings since 2018, the PTAB has applied the same claim construction standard as used in district court; a recent Memorandum confirms the PTAB will likewise apply the same standard that district courts use for...
