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PTAB Requests Comments Regarding Discretionary Institution Issues

PTAB Requests Comments Regarding Discretionary Institution Issues

by Matthew Johnson | Oct 20, 2020 | 325(d) issues, PTAB News, Trial Institution

By Matt Johnson – The Supreme Court has held the PTAB’s “decision to deny a petition is a matter committed to the Patent Office’s discretion,” and that there is “no mandate to institute review.” Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2140 (2016). ...
BREAKING: Arthrex Headed to the Supreme Court

BREAKING: Arthrex Headed to the Supreme Court

by Matthew Johnson | Oct 13, 2020 | Federal Circuit Appeal, PTAB News

By Matt Johnson – On Tuesday, the Supreme Court granted certiorari in the three appeals from the Federal Circuit’s Arthrex decision, consolidating those three cases for briefing and argument.  The questions to be presented are as follows: 1. Whether, for...
PTAB Presents Precedential Opinion Recommendation Portal

PTAB Presents Precedential Opinion Recommendation Portal

by Matthew Johnson | Sep 25, 2020 | PTAB News

The Patent Trial and Appeal Board (PTAB) has added an online form to the USPTO website that allows any member of the public to nominate any PTAB decision for precedential or informative designation. Those nominating a decision must provide a case number, case name,...
2020 PTAB Bar Association Annual Conference Rescheduled

2020 PTAB Bar Association Annual Conference Rescheduled

by Matthew Johnson | Sep 15, 2020 | PTAB News

By Sue Gerber and Matt Johnson – After having to be postponed due to coronavirus concerns, the 2020 PTAB Bar Association Annual Conference has now been rescheduled and is going forward on September 24-25, 2020, with pre-conference sessions being held September...
PTAB Holds Mock Oral Arguments for LEAP Attorneys

PTAB Holds Mock Oral Arguments for LEAP Attorneys

by Matthew Johnson | Aug 19, 2020 | PTAB News

By Robert M. Breetz, Stephanie M. Brooker, and Matt Johnson – Holding its first mock oral arguments, the PTAB provided LEAP eligible participants with a unique opportunity to argue in front of PTAB judges.  On August 7, 2020, mock oral PTAB hearings were held...
Precedential: PTAB Will Rarely Identify MTA Unpatentability Grounds

Precedential: PTAB Will Rarely Identify MTA Unpatentability Grounds

by Tom Ritchie | Jul 31, 2020 | Amendment Practice, PTAB News

By Tom Ritchie – The PTAB may sua sponte raise unpatentability grounds based upon the prior art of record when reviewing a motion to amend. Nike, Inc. v. Adidas AG, 955 F.3d 45, 51 (Fed. Cir. 2020). It is now clear, however, that the PTAB will do so only in...
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