by Matthew Johnson | Nov 30, 2018 | Petitions
By Sue Gerber and Matt Johnson The PTAB has discretion to deny “follow-on” petitions that challenge the validity of a patent that has been previously subjected to inter partes review. See 35 U.S.C. § 314(a); Gen. Plastic Indus. Co. Ltd. v. Canon Kabushiki Kaisha,...
by Matthew Johnson | Nov 27, 2018 | Amendment Practice
By Matt Johnson On November 27th, Acting Deputy Chief Administrative Patent Judge Jacqueline Bonilla presented a webinar on the PTAB’s proposed Motion to Amend pilot program. In October 2018, the Patent Office published a request for comments on motion to amend...
by Matthew Johnson | Oct 30, 2018 | Pharmaceutical, PTAB News, PTAB Trial Basics
By Josh Nightingale and Matt Johnson The USPTO has revised its standard operating procedure (SOP) governing the assignment of judges to panels in Patent Trial and Appeal Board (PTAB) cases. The SOP, available here, provides guidance to Board administrative personnel...
by Matthew Johnson | Oct 19, 2018 | Discovery, PTAB Trial Basics
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...
by Matthew Johnson | Oct 10, 2018 | Claim Construction
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...
