PTAB Strategies and Insights – December 2019

The PTAB Strategies and Insights newsletter provides timely updates and insights into how best to handle proceedings at the USPTO. It is designed to increase return on investment for all stakeholders looking at the entire patent life cycle in a global portfolio.

This month you will find two articles covering:

• A potentially winning strategy for gaining approval to amend claims during an IPR proceeding – a recent decision in Lectrosonics v. Zaxcom suggests that amendments directed toward objective indicia can win Board approval for amending claims;
• An important precedential decision out of the PTAB’s Precedential Opinion Panel highlighting standards for printed publications at the institution and final written decision milestones in IPRs.

This is the last newsletter for 2019, but we will be back with fresh cases and strategic guidance in 2020. In addition, you should look for our year-in-review publications early in 2020. The first will cover the most important PTAB cases decided at the Federal Circuit in 2019. The second will cover the most important developments at the PTAB itself.

We welcome feedback and suggestions about this newsletter to ensure we are meeting the needs and expectations of our readers. So if you have topics you wish to see explored within an issue of the newsletter, please reach out to me.

To view our past issues, as well as other firm newsletters, please click here.

Best,
Jason Eisenberg