Another Bite? CAFC Allows Expansion of Arguments in Reply
By Evan Jones and Emily Tait - In a recent decision, the Federal Circuit found no abuse of discretion by the Board when it allowed Apple to expand its analogous art contention in its IPR reply, finding that the Board’s decision did not run afoul of the “newness” nor...
Error! PTAB Denies Motion for Supplemental Information to Correct Inadvertent Omission
By Albert Liou and Daniella Paredes - In Nanobebe US Inc. v. Mayborn (UK) Limited et al., the PTAB denied a Petitioner’s Motion to submit supplemental information, even though Petitioner argued the information had been inadvertently omitted in the original petition. ...
Institution Denied Based On Written Description in “Alternative Embodiments”
By Evan Jones and Evan McLean - On September 21, 2023, the PTAB denied United Services Automobile Association’s petition to institute inter partes review of Auto Telematics’s U.S. Patent No. 9,633,487. IPR2023-00519, Paper 10. The ’487 patent relates generally to a...
Narrow Stipulation Results in Fintiv Denial
By David Linden and Dave Maiorana - On March 31, 2023, Zhuhai CosMX Battery Co., Ltd. (“Zhuhai”) filed a petition for inter partes review (“IPR”) of claims of U.S. Patent No. 11,329,352 (“the ’352 Patent”), assigned to Ningde Amperex Technology Ltd. (“Amperex”). The...
RULEMAKING: PTO Aims for Transparency, Judicial Independence at PTAB
By Christian Roberts and Matthew Johnson - On October 6, 2023, the United States Patent and Trademark Office (“USPTO”) issued a Notice of Proposed Rulemaking (“NPR”) making changes to the Patent Trial and Appeal Board’s (“PTAB”) internal circulation and review of...