When Might a PTAB Rehearing Be Granted?
By Sabrina Bellantoni and Matt Johnson - Recently, the Patent Trial and Appeals Board (“PTAB”) granted a request for rehearing of a decision that denied an institution of inter partes review and then instituted a trial on all the challenged claims on all the grounds...
Director Issues Guidance on Use of AI for Documents Submitted to PTAB
By Carl Kukkonen, Stephanie M. Mishaga, and Pranita Dhungana - USPTO Director Katherine K. Vidal issued guidance on February 6, 2024 regarding the use of AI in drafting materials submitted to the USPTO’s administrative boards, including the PTAB. Of biggest concern...
En Banc Federal Circuit Questions Standard for Design Patent Obviousness
By Jesse Wynn and John Evans – Changes to design patent validity law may be coming thanks to LKQ v. GM, a case that we’ve been tracking since April 2021. On February 5, 2024, in a rare en banc hearing, the Court of Appeals for the Federal Circuit asked tough...
Federal Circuit Affirms Claim Construction and How It Applies
By Luke Cipolla, Matt Silveira, and Matt Johnson - In Pacific Biosciences of California, Inc. v. Personal Genomics Taiwan, Inc., the Federal Circuit recently affirmed two PTAB decisions in IPRs filed by Pacific Biosciences of California, Inc. (PacBio) that challenged...
PRECEDENTIAL – Patent Appendix That Was Referenced, But Not Incorporated, Is Not Prior Art
By Connor Scholes, Owen Carpenter, Bill Devitt, and Dave Maiorana - In Apple Inc. v. DoDots Licensing Sols. LLC, IPR2023-00939, Paper 12 (PTAB Jan. 3, 2024) (“Decision”), the PTAB clarified what is and what is not part of the prior art, and as such what can be...