PTAB Webinar Addresses Motion To Amend 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?
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...
Parties Seek To Preserve Arthrex Rights Despite Waiver Ruling
By Mike Lavine and Matt Johnson - Following on Judge Newman’s dissent in Sanofi-Aventis Deutschland GmbH v. Mylan Pharmaceuticals Inc., parties are seeking to preserve their rights by challenging the Federal Circuit’s holding that a party’s failure to raise the...
PTAB Grants Rare Request For Live Witness Testimony In IPR
By John Marlott - While PTAB proceedings are ordinarily decided “on the papers,” in certain rare cases the Board will permit live witness testimony at the oral hearing. The Board’s precedential decision in K-40 v. Escort explains that “[t]he Board does not envision...
PTAB Reconciles Its Prior §101 Ruling With CBM Institution
By Morgan Restaino and Tim Heverin Following guidance from the Federal Circuit, the PTAB has vacated a previous Board decision granting Covered Business Method review in Apple, Inc. v. Universal Secure Registry LLC (P.T.A.B. Dec. 3, 2018). The PTAB’s decision to...