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Uncertainty on Estoppel of Claims Amended at the PTAB

Since the Leahy-Smith America Invents Act (AIA) was enacted in 2011, thousands of petitions have been filed to request institution of inter partes review (IPR) to challenge patents. Upon the issuance of a final written...more

How the PTAB Treats Pre-Institution Factual Disputes

As a result of recent changes in the PTAB rules of practice, counsel for patent owners should consider whether there are opportunities to identify factual deficiencies in petitions. Counsel for petitioners in inter partes...more

The Prevailing Uncertainty of a Second Bite at the Apple at the PTAB Under § 325(d) in Multiple Proceeding Cases

After filing a first post-grant proceeding, whether an inter partes review, a covered business method proceeding or a post-grant review petition challenging certain claims of a patent, the same petitioner may decide to file a...more

Form Vs. Substance In Means-Plus-Function Analysis

Section 112(f) of the patent statute allows a patentee to define a structural claim element in terms of its function alone, i.e., “as a means ... for performing a specified function without the recital of structure ... in...more

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