PREVAIL Act Passes Committee
By Levent Herguner, Derek Walker, and Matt Johnson - The Promoting and Respecting Economically Vital American Innovation Leadership (“PREVAIL”) Act has moved to the Senate for a full vote after passing the Senate Judiciary Committee vote 11-10 on November 21, 2024. In...
“First Available” Date Alone Is Insufficient Evidence of Disclosure
By Adam Cook and Matt Johnson - The Patent Trial and Appeal Board (“PTAB”) denied institution in an inter partes review (“IPR”), finding that an online store’s assertion regarding when a product was “first available” is by itself insufficient evidence of enabling...
Expert Testimony That Does Not Disclose Underlying Facts Or Data Entitled To Little Weight
By James Twieg and Matt Johnson - “Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.” 37 C.F.R. § 42.65(a). With that principle in mind, the PTAB recently denied institution of inter...
The “Best Way” to Avoid Adverse Judgment
By: Daniel Sloan, Kevin McCarthy, and Matt Johnson - The PTAB recently denied Bestway (USA), Inc.’s (“Petitioner”) request for PGR of U.S. Pat. No. 11,959,512 B2 (“the ’512 patent”) but declined to enter adverse judgment against Intex Marketing, Ltd. (“Patent Owner”)...
USPTO Finalizes Partial Permanence of MTA Pilot Program
By Adam J. Cook, Kristen VandeVoort,* Daniel Sloan, and Christian Platt - On October 18, 2024, the USPTO’s final rule regarding Motion to Amend (“MTA”) practice and procedures in trial proceedings under the America Invents Act became effective. The rule makes...