The Essential Case Law Guide to PTAB Trials

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This comprehensive resource offers a framework for understanding the Patent Trial and Appeal Boards' past practices to assist lawyers in more accurately predicting future PTAB actions. It follows the authors' observation drawn from years of study that there has been notable consistency in the body of decisions in case law decisions from the PTAB. This compilation of PTAB decisions supplies a wealth of guidance on the Board's treatment of various issues, providing the legal practitioner with significant information to guide their PTAB strategies, noting specific patterns that have arisen during inter partes review (IPR), post-grant review (PGR) and transitory covered business method review (CBM).PTAB trials follow a general procedure for each of the IPR, PGR, and CBM proceedings. Part I of The Essential Case Law Guide to PTAB Trials introduces these different Board proceedings, including an explanation of their differences and a trial timeline. Chapters focused on each type of proceeding summarize the rules and regulations at each phase and provide descriptions of the precedential decisions, informative decisions, and representative decisions showing the Board's interpretation of the USPTO regulations at these stages.Part II provides guidance on Board decisions that may apply at different points of a Board proceeding. Issues covered include the subtleties of how the Board applies patent concepts of claim construction and patentability in determining whether to institute trial, allow claim amendments, and determine patentability in its final written decision. Chapters also address discovery and evidence, and which information can be introduced into a PTAB trial, how it may be presented, and how to protect information from public disclosure. The formality and timing requirements of motions before the Board and the consequences of estoppel for both parties once a final written decision issues are also considered.