On August 18, 2020, the USPTO issued guidance on § 311(b)’s institution requirement that IPR’s may only be petitioned “on the basis of prior art constisting of patents or printed publications” and how this applies to statements of the applicant in the specification. The use of statements like these is referred to as ‘Applicant-Admitted Prior […] On July 22, the Federal Circuit ruled that marking requirements for pre-suit damages cannot be satisfied based on defendant’s infringement of a related method claim in Packet Intelligence LLC v. NetScout Systems, Inc. In the case, Packet Intelligence sued NetScout Systems for patent infringement in the Eastern District of Texas. The Jury found in favor […] The Federal Circuit ruled that the PTAB May review all aspects of patentability for substitute claims in inter partes review (IPR) proceedings in Uniloc 2017 LLC v. Hulu, LLC last month. At the PTAB, Hulu petitioned for IPR on Uniloc’s patent “System and Method for Adjustable Licensing of Digital Products”. In the course of the […] Disruption to travel, mail, and in-person meetings caused by the ongoing COVID-19 pandemic has made acquiring signatures problematic and the need for inventor signatures has created a direct impact on the patent procedures for many companies. To mitigate these issues, it is increasingly important for applicants and their counsel to understand the United States Patent […] The 2020 IAM Patent 1000 rankings were announced this week, and Maier & Maier was heavily featured among the highest-level experts in the patent field. Both founding partners Timothy and Christopher Maier were honored, along with renowned partner Stephen Kunin. Per the IAM description honoring the firm, “Christopher Maier and Timothy Maier run a self-titled […] The USPTO has been active in responding to the COVID-19 pandemic. They’ve extended deadlines for affected applicants and practitioners multiple times, established multiple pilot programs related to the virus, and taken steps to make sure they can continue operations throughout the pandemic. Now the USPTO has expanded its adjustments to allow applicants to restore benefit […] The USPTO has published proposed changes to the rules governing proceedings at the PTAB. Comments must be submitted by June 26th to be considered. A majority of the changes conform the rules with current PTAB practices already adopted, while one specific change would represent a diversion from the norm. First, the proposal would adopt the […] In the past few months, the USPTO has made a number of extensions and changes in response to the spread of coronavirus. Previously, the USPTO had extended deadlines that would have come between March 27 and April 30 by 30 days and then deadlines from March 27 to May 31 to June 1st for those […] The timing considerations that go into filing a petition for inter partes review with the PTAB have become progressively more difficult to navigate as the PTAB exercises increased discretion in rejecting IPRs. This trend started with the precedential NHK decision in which the PTAB rejected an IPR petition on the basis of an upcoming district […] Continuing its efforts to keep up with COVID-19, the USPTO has announced a prioritized examination pilot program reserved for applications covering products or processes subject to an applicable FDA approval for COVID-19 use. Beginning on July 13, 2020, applicants may request prioritized examination for covered applications. The USPTO’s objective for the pilot is to complete […]