by David Maiorana | Jul 20, 2023 | PTAB News
By Alexa Grillis,* David Linden, and Dave Maiorana – On June 2, 2023,the PTAB held the standard enunciated in Astoria Federal Sav. & Loan Ass’n v. Solimino, 501 U.S. 104 (1991) applies to claim preclusion determinations. This was yet another decision in the...
by John Marlott | Jul 18, 2023 | Amendment Practice, PTAB News
By John Wright and John Marlott – The USPTO hosted a “Boardside Chat” on June 15, 2023, to discuss the Motion to Amend Pilot Program, including the recent call for public input on the PTAB’s existing claim amendment procedures and potential rule changes. The...
by Marc S. Blackman | Jul 6, 2023 | Estoppel, PTAB News
By Marc Blackman and Ruth Brindel* – In decisions rare of their kind, the U.S. Patent and Trademark Office (“USPTO”) terminated two ex parte reexaminations in view of inter partes review (“IPR”) proceedings initiated by a different party. The decisions represent...
by Joseph Beauchamp | Jul 6, 2023 | Prior Art Issues, PTAB News
By Alison Ibendahl and Joe Beauchamp – In a recent decision, the Patent Trial and Appeals Board denied institution of inter partes review after holding that Petitioner Microsoft’s key obviousness reference did not qualify as a printed publication. Microsoft...
by John Marlott | Jul 5, 2023 | Estoppel, Federal Circuit Appeal, PTAB News
By John Marlott and John Wright – The Supreme Court will not consider a challenge to the proper scope of AIA statutory estoppel, leaving the Federal Circuit’s governing interpretation in place. The Court’s June 26, 2023 order list denied the pending petition for...
by Matthew Johnson | Jun 29, 2023 | PTAB News, Trial Institution
By Kyle Perisutti*, Robby Breetz, and Matt Johnson – The PTAB recently exercised its discretion under 35 U.S.C. § 314 to deny institution of inter partes review for inefficient use of the PTAB’s time and resources notwithstanding that the petitioner met the...
