by John Marlott | Aug 2, 2019 | CBMs, Patent Eligible Subject Matter
By John Marlott Is the little-used CBM patent review program the key to passage of § 101 legislation? Congress is currently considering legislation to drastically alter the patent eligibility statute, 35 U.S.C. § 101. The unabashed intent of the proposed legislation...
by John Marlott | May 23, 2019 | Trial Institution
By John Marlott – Section 112 indefiniteness issues—particularly in the context of means-plus-function claim limitations—can present difficult problems for IPR petitioners, and, sometimes, these § 112 problems can doom an IPR petition at the PTAB. The PTAB has...
by John Marlott | Mar 22, 2019 | Amendment Practice
By John Marlott We recently posted about the panel opinion in Amazon.com v. Uniloc, a final written decision demonstrating how the PTAB has given heightened scrutiny to proposed substitute amended claims in an IPR. In addition to assessing the patentability of...
by John Marlott | Feb 7, 2019 | Amendment Practice
By John Marlott An IPR of issued patent claims is statutorily limited to prior art challenges based on patents and printed publications under § 102 (novelty) or § 103 (obviousness). The PTAB may not institute an IPR of existing patent claims on other unpatentability...
by John Marlott | Dec 28, 2018 | Federal Circuit Appeal
By John Marlott – Estimates are that roughly 80% of IPRs involve a challenge to a patent being asserted against the petitioner in a district court litigation. Typically, in those IPRs, if the litigation-defendant-petitioner loses at the PTAB, there is no...
