New Case Theories Post-Institution; Better to Ask Permission
By Christian Roberts and Matt Johnson - Petitioners should be cautious of introducing a new theory in a Petitioner Reply before the PTAB. On February 7, 2023, the Patent Trial and Appeal Board (“PTAB”) entered a final written decision declining to find any claims...
Director Provides Insight On Interplay Between Written Description And Enablement
By Levent Herguner and Matt Johnson - USPTO Director Kathi Vidal recently vacated a PTAB decision denying institution of a post-grant review and remanded the case for further proceedings. The petitioner challenged claims 1–27 of the ’274 patent under 35 U.S.C. §...
How Long Is Too Long To Wait To Settle?
By Sue Gerber and Matt Johnson - An IPR “shall be terminated with respect to any petitioner upon the joint request of the petitioner and patent owner, unless the Office has decided the merits of the proceeding before the request for termination is filed.” 35 U.S.C....
Federal Circuit Holds Party Can Challenge PTAB Rulemaking
By Anthony Bautista and Matt Johnson - In Apple, Inc. v. Katherine K. Vidal, the Federal Circuit ruled that Apple and the other plaintiffs could continue their suit on a lone surviving challenge to the PTAB Director’s rulemaking procedures regarding institutional...
Multiple Dependent Claims are Treated as Multiple Claims
By Matt Chung and Matt Johnson - On February 24, 2023, Director Kathi Vidal issued a decision under director review granting rehearing and modifying the final written decision for Nested Bean, Inc. v. Big Beings USA Pty. Ltd. Nested Bean, Inc. (“Nested Bean”) filed a...