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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...
PTAB Finds Some Pipeline Patent Claims Patentable, Others Amendable

PTAB Finds Some Pipeline Patent Claims Patentable, Others Amendable

by Matthew Johnson | Jun 13, 2019 | Amendment Practice

By Levent Herguner and Matt Johnson In a rare successful motion to amend, the PTAB found certain claims of a pipeline monitoring system patentable, and allowed substitution of amended claims for others deemed unpatentable.  See Syrinix Inc. v. Blacoh Fluid Control...
PTO Issues Guidance On Reissue And Reexam Of AIA-Challenged Claims

PTO Issues Guidance On Reissue And Reexam Of AIA-Challenged Claims

by Matthew Johnson | Apr 30, 2019 | Amendment Practice

By Matt Johnson Further to the PTAB’s efforts to improve the ability of patent owners to amend claims in an AIA trial via the Motion to Amend Pilot program, the USPTO recently issued guidance on other avenues for amending claims of patents challenged in AIA...
PTAB Issues Fifth Installment Of Its Motion To Amend Study

PTAB Issues Fifth Installment Of Its Motion To Amend Study

by Emily Tait | Apr 15, 2019 | Amendment Practice

By Emily Tait On March 13, 2019, the PTAB issued the fifth installment of its ongoing Motion to Amend Study, which tracks and analyzes motions to amend filed in AIA trials through September 30, 2018 (end of Fiscal Year 2018). The data collected by the Board includes:...
PTAB’s Motion to Amend Pilot Program:  Actual v. Proposed

PTAB’s Motion to Amend Pilot Program: Actual v. Proposed

by Matthew Johnson | Mar 26, 2019 | Amendment Practice

By Catharina J. Chin Eng and Matt Johnson To facilitate claim amendments in inter partes, post-grant and covered business method patent reviews (collectively AIA trials), the USPTO on October 29, 2018, published a request for comment (“RFC”) on a proposed procedure...
PTAB Makes Precedential Its Heightened Scrutiny Of Amended Claims In IPRs

PTAB Makes Precedential Its Heightened Scrutiny Of Amended Claims In IPRs

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...
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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.