Rosen-Durling Test Back on the Table
By John Evans, Vishal Khatri, and Jesse Wynn - In February, the Federal Circuit declined to modify or overrule its long-standing test for obviousness in design patents, the Rosen-Durling test, despite arguments that the Supreme Court overruled it in KSR v. Teleflex. ...
Director Demonstrates Ability to Review Non-Dispositive PTAB Determinations
By Ashvi Patel, Adam J. Cook,* and Josh Nightingale - On May 16, 2023, Director Katherine Vidal vacated a portion of a final written decision regarding real parties in interest (“RPIs”) in Unified Patents, LLC v. Memory Web, LLC, IPR2021-01413. Director Vidal held...
Motion to Amend: Much to Admire?
By Alex Li and Matt Johnson - Motions to amend (MTA) are becoming a more frequently used tool for patent owners litigating before the Patent Trial and Appeal Board (PTAB). When a patent is being challenged in an inter partes review (IPR) or post-grant reviews (PGR)...
PTAB Clarifies Claim Preclusion Standards
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...
Takeaways From Motion to Amend Pilot Program Chat
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 speaker...