Seeking Adverse Judgment After Disclaimer? Ask For It Quickly
After the Federal Circuit’s Arthrex decision, a petitioner seeks entry of an adverse judgment following patent owner’s disclaimer of all challenged claims prior to institution of CBM, but the PTAB’s treatment illustrates that timing of requests is often critical.
Stop What You Are Doing: Collateral Estoppel At The PTAB
By: Rich Graham and Matt Johnson – Collateral estoppel precludes a PTAB panel from reaching a different claim construction of an identical term in two different proceedings related to two different patents owned by the same patent owner.
PTAB Reversed For Giving Process Step In Product Claims No Weight
By: Mike Lavine and Joe Beauchamp – A recent Federal Circuit decision touches on the treatment of process steps in a product claim where the PTAB placed the onus on the applicant to persuasively explain the structure imparted by the process.
Failure To Maintain Correspondence Address Could Be Detrimental To Your Health
By: Matt Johnson – The PTAB grants Patent Owner a good cause extension to file the Patent Owner Preliminary Response, but not without a strong dissent citing Patent Owner’s failure to update the correspondence address of record.
Is The PTAB Bound By A Previous Federal Circuit Claim Construction?
By: Dave Maiorana – The Federal Circuit affirms a PTAB determination that the PTAB is not bound by a previous Federal Circuit’s finding regarding claim construction and patentability, where the court’s finding was decided under ITC, not PTAB, standards.