PTAB Strategies and Insights – September 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 four articles covering:

• A discussion of the PTAB’s discretion to reconsider and vacate its institution decisions even after trial has ended – via the Federal Circuit’s decision in BioDelivery v. Aquestive;
• The criticality of fully pressure testing obviousness rationales before filing the petition – seen through the lens of Henny Penny v. Frymaster, in which the Federal Circuit affirmed the PTAB’s decision to reject arguments advanced by a petitioner only after the patent owner response;
• How the words–not just the drawings–in a design patent can affect claim construction; and
• The most recent opinions designated as precedential involving both the accused infringer and patent owner triggered time bars and statutory disclaimer.

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.

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