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PTAB Webinar Addresses Motion To Amend Practice

PTAB Webinar Addresses Motion To Amend Practice

by Matthew Johnson | Dec 11, 2019 | Amendment Practice

By Sue Gerber and Matt Johnson On December 4, 2019, the PTAB hosted the last installment for 2019 in its “Boardside Chat” webinar series.  The program, presented by Deputy Chief Judge Jacqueline Bonilla and Lead Administrative Patent Judge Jessica Kaiser, addressed...
POP: Can PTAB Raise Ground of Unpatentability In Addressing Motion to Amend?

POP: Can PTAB Raise Ground of Unpatentability In Addressing Motion to Amend?

by Matthew Johnson | Dec 9, 2019 | Amendment Practice

By Alex Li and Matt Johnson During an inter partes review (IPR), it is usually the Petitioner that raises grounds of unpatentability against a Motion to Amend that the Patent Owner must defend in front of the Patent Trial and Appeal Board (PTAB).  Is the PTAB allowed...
PTAB Proposes Burden of Persuasion Rules for AIA Amendments

PTAB Proposes Burden of Persuasion Rules for AIA Amendments

by Matthew Johnson | Oct 30, 2019 | Amendment Practice, PTAB News

By Phillip S. Beck and Christian Platt On October 21, 2019, the Patent Trial and Appeal Board (“PTAB”) of the United States Patent and Trademark Office (“USPTO”) provided a Notice of Proposed Rulemaking (“NPRM”) concerning their rules of practice in allocating burdens...
PTAB Judges Discuss Recent Procedure Changes in Boardside Chat

PTAB Judges Discuss Recent Procedure Changes in Boardside Chat

by Albert Liou | Oct 15, 2019 | Amendment Practice

By Albert Liou The Patent Trial and Appeal Board held a Boardside Chat on October 10, 2019, discussing the various recent changes made to PTAB procedures.  The panel discussion featured Chief Judge Scott Boalick, Deputy Chief Judge Jackie Bonilla, Vice Chief Judge Tim...
Trial Practice Guide Updates – Discovery, Testimony, Motions to Amend, and Joinder

Trial Practice Guide Updates – Discovery, Testimony, Motions to Amend, and Joinder

by Matthew Johnson | Jul 25, 2019 | Amendment Practice, Discovery, Joinder, Motions Practice, PTAB News

By Catharina Chin Eng and Matt Johnson Our prior post on the PTAB’s second update to the AIA Trial Practice Guide (TPG), published July 15, 2019, highlighted the additional guidance provided for petitions, patent owner preliminary responses and claim construction. ...
Trial Practice Guide Updates – Multiple Petitions, Claim Construction, and PO Testimonial Evidence

Trial Practice Guide Updates – Multiple Petitions, Claim Construction, and PO Testimonial Evidence

by Matthew Johnson | Jul 23, 2019 | Amendment Practice, Claim Construction, PTAB News, PTAB Trial Basics

By Catharina Chin Eng and Matt Johnson On July 15, 2019, the USPTO’s Patent Trial and Appeal Board (PTAB) published a second update to the AIA Trial Practice Guide (TPG) (“2nd Update”), providing additional guidance for trial practice before the Board. The original...
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The opinions expressed are those of the authors and do not necessarily reflect the views of Jones Day or its clients. The posts and information provided are for general information purposes and are not intended to be and should not be taken as legal advice.