by John Marlott | Feb 22, 2017 | Federal Circuit Appeal, PGR
By Christian Damon and John Marlott In a post last month we explained that the standard applied by the PTAB in post grant proceedings for determining whether claims are sufficiently definite under 35 U.S.C. §112(b) is more demanding than the standard applied by U.S....
by John Marlott | Jan 19, 2017 | CBMs, PGR
By John Marlott The definiteness requirement for patent claims is set forth in Section 112(b), mandating that a patent specification conclude with one or more claims “particularly pointing out and distinctly claiming subject matter which the applicant regards as his...
by John Marlott | Dec 13, 2016 | Amendment Practice, Federal Circuit Appeal
By John Marlott As we reported earlier (link), the en banc Federal Circuit is currently considering two important questions involving the PTO’s rules for claim amendments and the PTAB’s handling of motions to amend during IPR proceedings, In re: Aqua Products, Inc.,...
by John Marlott | Nov 8, 2016 | Amendment Practice, Federal Circuit Appeal
By John Marlott Claim amendments in IPRs are statutorily authorized by the AIA. 35 U.S.C. § 316(d)(1) provides that “[d]uring an inter partes review instituted under this chapter, the patent owner may file 1 motion to amend the patent in 1 or more of the following...
