USPTO Requests Comments Regarding Motion to Amend Pilot
By John Wright and John Marlott - The USPTO continues to seek public feedback on PTAB procedures and potential rule changes. In addition to soliciting comments on the many proposed rule changes announced on April 21, 2023, the USPTO also recently issued a request for...
Will “Compelling Merits” Institution Standard Lead To Rubber Stamp FWDs?
By John Marlott and Ryan Mueller - If a PTAB panel finds “compelling merits” of unpatentability when making its initial institution decision, is there any realistic chance that same PTAB panel will reach a different result in the final decision at the conclusion of a...
Duty of Candor is Not to be Ignored
By Evan Tassis and Matt Johnson - In a rare exercise of authority, the PTAB issued sanctions against a Patent Owner for failure to meet its duty of candor and good faith by withholding information relevant to the patentability of challenged and substitute claims in...
Insufficient Arguing Below Causes Forfeited Review Above
By Adam J. Cook* and Josh Nightingale - Absent exceptional circumstances, the Federal Circuit will generally not consider arguments that a party failed to present in the tribunal under review. In Netflix, Inc. v. DivX, LLC, the Federal Circuit held that IPR...
USPTO Provides Insight on AMPRM Proposals
By Stephanie Mishaga, Emily Towers, and Matt Johnson - The USPTO issued an advance notice of proposed rules (“ANPRM”) on April 21, 2023 and is requesting comments and feedback from practitioners on proposed, proposed changes at the PTAB. The full ANPRM document is...