Avoiding Estoppel Is Not Good Cause To Withdraw Grounds After Institution
By: Sue Gerber and Matt Johnson – The PTAB considered a petitioner’s request to withdraw certain claims from consideration during Covered Business Method Review in order to avoid the effects of Section 315 estoppel following the Supreme Court’s SAS Institute decision.
Additional Discovery: Must Be More Than Mere Possibility
By: Tim Heverin – The PTAB elaborates on the first Garmin factor in considering a motion for additional discovery seeking documents relevant to inventorship.
Observations: Three Weeks After Supreme Court’s SAS Institute Decision
By: Joe Sauer – A look at the Board’s institution practice three weeks after the Supreme Court’s SAS Institute decision abolished the PTAB’s partial institution practice.
USPTO Director’s Alleged Conflict Not Imputed to PTAB Administrative Patent Judges
By: Stephanie Brooker and Carl Kukkonen – The PTAB considered whether a conflict of interest held by Director Iancu is imputed to the PTAB’s Administrative Patent Judges in view of the ABA’s Model Rules of Professional Conduct.
Proposed Rule: No More BRI in PTAB Trials
By: Rich Graham and Matthew Johnson – The article discusses the USPTO’s Notice of Proposed Rulemaking for Claim Construction Standards used in PTAB Proceedings. In a potentially momentous change to PTAB practice, under the newly proposed rule, the PTAB will no longer apply the broadest reasonable interpretation standard during post-grant trials.