Motion to Amend: Much to Admire?
By Alex Li and Matt Johnson - Motions to amend (MTA) are becoming a more frequently used tool for patent owners litigating before the Patent Trial and Appeal Board (PTAB). When a patent is being challenged in an inter partes review (IPR) or post-grant reviews (PGR)...
PTAB Clarifies Claim Preclusion Standards
By Alexa Grillis,* David Linden, and Dave Maiorana - On June 2, 2023,the PTAB held the standard enunciated in Astoria Federal Sav. & Loan Ass’n v. Solimino, 501 U.S. 104 (1991) applies to claim preclusion determinations. This was yet another decision in the...
Takeaways From Motion to Amend Pilot Program Chat
By John Wright and John Marlott - The USPTO hosted a “Boardside Chat” on June 15, 2023, to discuss the Motion to Amend Pilot Program, including the recent call for public input on the PTAB’s existing claim amendment procedures and potential rule changes. The speaker...
Salesforce’s Reexams Estopped by RPX IPRs
By Marc Blackman and Ruth Brindel* - In decisions rare of their kind, the U.S. Patent and Trademark Office (“USPTO”) terminated two ex parte reexaminations in view of inter partes review (“IPR”) proceedings initiated by a different party. The decisions represent...
Existence != Access – Public Accessibility Must be Clear
By Alison Ibendahl and Joe Beauchamp - In a recent decision, the Patent Trial and Appeals Board denied institution of inter partes review after holding that Petitioner Microsoft’s key obviousness reference did not qualify as a printed publication. Microsoft Corp. v....