PTAB’s Bait-and-Switch Violated the APA
By Lisa Furby and Sarah Geers - In Baker Hughes Oilfield v. Hirshfeld, the Federal Circuit held that the PTAB violated the Administrative Procedure Act (“APA”) by finding certain instituted claims obvious on grounds it had indicated in its institution that it would...
Motion to Exclude Improper Vehicle For Addressing Non-Responsive Evidence
By Lisa Furby and Dave Maiorana - In Apple, Inc. v. Parus Holdings, Inc. (IPR2020-00686), the PTAB denied the Patent Owner’s motion to exclude portions of the Petitioner’s supplemental expert declaration. Here the Patent Owner sought to exclude a number of paragraphs...
Motion to Amend Pilot Program Extended
The United States Patent and Trademark Office (USPTO) announced plans for the Patent Trial and Appeal Board (PTAB) to extend the Motion to Amend (MTA) pilot program. This program provides additional options for a patent owner who files an MTA in a trial proceeding...
CAFC: Nearly Identical Reference is Prior Art
By Albert Liou - In the recent precedential Federal Circuit decision Valve Corporation v. Ironburg Inventions Ltd., No. 2020-1315, 2020-1315, 2020-1379, 2021 WL 3628664 (Fed. Cir. August 17, 2021), the Federal Circuit ruled on an issue that is not often...
Didn’t Cut the Mustard: PTAB Finds Claims Lacked Written Description and Enablement
By Miguel Alvarez* and Sarah Geers - A recent post-grant review decision once again reminds patentees of the increasing scrutiny that claims are facing under the written description and enablement requirements under 35 U.S.C. § 112 (a). In this case, Commonwealth...