by John Marlott | Sep 1, 2017 | PTAB News
By Christian Damon and John Marlott In a prior post we compared the different standards for claim indefiniteness applied by courts in litigation and by the USPTO during pre-issuance and post-issuance proceedings. Another of our previous posts profiled a real-world...
by John Marlott | Jul 30, 2017 | Amendment Practice, Federal Circuit
By Christian Damon and John Marlott Last year, the Federal Circuit vacated the Board’s original decision denying the patent owner’s motion to amend two claims in IPR2014-00090, holding that the Board erred by “insist[ing] that the patent owner discuss whether each...
by John Marlott | Jun 20, 2017 | Evidentiary Issues, PTAB Trial Basics
By Christian Damon and John Marlott By rule, a petitioner may request permission from the Board to submit supplemental information in an IPR proceeding if: (1) the request is filed within one month of the Board’s institution decision, and (2) the supplemental...
by John Marlott | May 11, 2017 | Federal Circuit Appeal, Time Limits, Trial Institution
By John Marlott The en banc Federal Circuit is currently considering whether the PTAB’s findings regarding 35 U.S.C. § 315(b)’s one year bar on IPR petitions can be reviewed on appeal. In Wi-Fi One v. Broadcom Corp, the en banc Court is set to decide the following...
by John Marlott | Apr 19, 2017 | Federal Circuit Appeal
By Christian Damon, Patrick O’Rear, and John Marlott As we have previously discussed on this blog, when considering an issue of patentability such as definiteness under section 112, the PTAB and a district court may properly reach opposite conclusions. In...
