PTAB Strategies and Insights – February 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.

In addition to our newsletter articles this month, we direct your attention to the publication of our annual review of the top cases to reach the Federal Circuit from the PTAB. This is the third annual report on appeals from the PTAB to the Federal Circuit. A pdf of the full report can be downloaded from the Sterne Kessler Goldstein & Fox website here.

This month, we cover three topics:

• We are reprinting by permission an article by Rob Sterne addressing the challenges associated with subject matter eligibility stemming from the Federal Circuit’s decision in Athena Diagnostics v Mayo Collaborative Services;
• We examine two Federal Circuit decisions allowing a single Petition Ground to include alternative invalidity theories; and
• We examine two new rulings on standing to appeal including one unique to joinder petitioners.

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.