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Prior results do not guarantee a similar outcome. This information is provided by McKool Smith for informational purposes only and is not intended, nor should it be construed, as legal advice.

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Claim Construction: Broadest Reasonable Interpretation vs. Philips

Effective May 2, 2016, patents expiring within 18 months of the filing of the petition may use a Philips-type claim construction, rather than broadest reasonable interpretation. 81 Fed. Reg. 18,750 at 18,766 (to be codified in 37 C.F.R. pt. 42.100(b)). The Philips-type claim construction may be requested by either party within 30 days of the filing of the petition.  Read More>>

Including Expert Declarations in the Preliminary Response

Starting May 2, 2016, patent owners may choose to include “new testimonial evidence” in the preliminary response of an IPR. 81 Fed. Reg. 18,750, 18,766 (April 1, 2016) (deleting 37 C.F.R. § 42.107(c) prohibition on “new testimonial evidence”). Before this change, a petitioner could provide an expert declaration supporting its petition, but a patent owner in many circumstances could not provide its own expert declaration supporting its preliminary response and needed to rely on attorney argument.  Read More>>

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PTAB Rule Changes – May 2, 2016

New PTAB rule changes go into effect on May 2, 2016. 81 Fed. Reg. 18,750 (April 1, 2016). This marks the second round of changes since the PTO started soliciting feedback on PTAB trials in April 2014. Read More>>