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Recent Blog Posts

  • Upcoming PTAB & Patent Policy CLE (Fall '17) Post-Grant Patent Trials 2017 & More  For those seeking PTAB related CLE/education the fall, there are a number of great programs on the immediate horizon.  This September, the most widely attended PTAB CLE program returns, the Practicing Law Institute's USPTO Post-Grant Patent Trials 2017. (register here)   Sept. 25, 2017, New York, NY (webcast available)  Oct. 25th 2017, San Francisco, CA (webcast available) I am pleased to return as chair of this program along with Rob Greene Sterne of Stern Kessler Goldstein & Fox. This day-long... More
  • Separate Article III Standing Not Necessary for PTAB Appellees Article III Standing Only Necessary for Party Invoking Authority of Federal Courts  Last week, I analyzed the government's arguments supporting Article III standing for intervenors in Knowles Electronics v. Matal. In that case, the panel questioned whether the government had Article III standing to intervene in a case where the original appellee dropped out. As to the arguments presented by the government, I explained that I found the most compelling argument to be that the agency can piggyback off of the Article III... More
  • Patent Prosecutor Alert: When is a Rejection a New Rejection? What Exactly is the "Thrust of the Rejection?"  Every so often a decision comes out of the USPTO's Patent Trial & Appeal Board (PTAB) or the Federal Circuit that has immediate value for patent prosecutors. For example, back in June, the Federal Circuit analyzed the degree of corroboration necessary for an In re Katz declaration.  Earlier this week, the Court reviewed an appeal from an inter partes reexamination in Honeywell Intl. Inc. v. Mexichem Amanco Holding S.A. de C.V. et al. to determine whether or not... More
  • PTAB Designates New Precedent for AIA Trials Assignor Estoppel Not an Exception to 311(a)  The Patent Trial & Appeal Board (PTAB) has designated the following decision as precedential: Athena Automation Ltd v. Husky Injection Molding System Ltd., IPR2013-00290, Paper 18 (PTAB Oct. 25, 2013), Section II.A. (here)  Athena holds that the doctrine of assignor estoppel is not an exception to 35 U.S.C. § 311(a), which allows “a person who is not the owner of a patent” to file a petition for inter partes review. This decision was later left undisturbed by... More
  • USPTO Intervenor Standing in PTAB Appeals USPTO Explains Intervenor Standing  Some weeks back in Knowles Electronics v. Matal, the Federal Circuit, sua sponte, asked the following of the parties (order here):  When the prevailing party in an inter partes reexamination proceeding before the USPTO’s Patent Trial and Appeal Board (“Board”) declines to appear before this court to defend the decision below, is the USPTO’s Director required to possess Article III standing in order to intervene?  If yes, does the Director possess such standing in this appeal?  Additionally, if the Director does... More