The Book of Jargon® - Patent Trial & Appeal Board (PTAB)

An interactive glossary of PTAB acronyms, slang, and terminology.

The Book of Jargon® – Patent Trial & Appeal Board (PTAB) is one of a series of practice area-specific glossaries published by Latham & Watkins. The definitions contained in it are applicable terms often encountered in PTAB practice. These terms raise complex legal issues on which specific legal advice will be required. The terms are also subject to change as applicable laws and customary practice evolves.

You can search for terms in a number of convenient ways:  

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The information contained is not legal advice and should not be construed as such.

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  • Additional Discovery:

    any Discovery beyond Routine Discovery. The PTAB will consider the Garmin Factors when determining whether a Motion for Additional Discovery should be granted. See Garmin Int’l Inc. et al. v. Cuozzo Speed Techs. LLC, IPR2012-00001, Paper 26 (PTAB Mar. 5, 2013)

    In IPR and CBM Review, Additional Discovery may be granted in the interest of justice, considering the totality of the circumstances. 37 C.F.R. § 42.51(b)(2)(i).

    In PGR, Additional Discovery may be granted upon a showing of good cause. This is a slightly lower standard than the interest of justice standard for IPR and CBM Review and requires the requesting party to establish a specific factual reason for the Additional Discovery. 37 C.F.R. § 42.224.

    Administrative Patent Judge (APJ):
    an administrative law judge sitting on the PTAB. Each APJ is a lawyer, typically with a technical background and many years of experience in patent law, such as in ExaminationPatent Prosecution or litigation.
    Amendment(s):
    Claim Amendment(s)
    America Invents Act/Leahy-Smith America Invents Act (AIA):

    a federal statute signed into law on September 16, 2011, that changed US patent law, including creating the PTAB and establishing the new PTAB Proceedings of IPRPGR and CBM Review. The AIA changed the US patent system from a First to Invent system to a First to File system. Pub. L. No. 112-29, 125 Stat. 284-341.

    Section 18 of the AIA, which addresses CBM Review patents, is not codified in Title 35 of the United States Code.

    See also Technical Amendment (HR 6621, “An Act to correct and improve certain provisions of the Leahy-Smith America Invents Act and title 35, United States Code”) (among other improvements, the amendment removes the nine-month waiting period to file an IPR against a PGR-ineligible first-to-invent patent that issues after the first-to-file effective date)

    Anticipation:

    Ground of Unpatentability or ground for rejecting a patent claim based on the prior invention or disclosure of the claimed invention by another, or the inventor’s own disclosure of the claimed invention by publication, Prior Sale or Prior Use. See 35 U.S.C. § 102(b). Anticipation requires that all claim elements appear in a single prior art reference.

    Anticipation also means a lack of Novelty.

    Appeal, Right of:

    the right of both parties to a PTAB Proceeding, the Petitioner and the Patent Owner, to appeal a Final Written Decision of the PTAB. All appeals from PTAB Proceedings are made directly to the Federal Circuit. Notice of appeal to the Federal Circuit. Notice of appeal to the Federal Circuit is due within 63 days of a Final Written Decision. 35 U.S.C. §§ 141-142; 37 C.F.R. § 90.3.

    The PTAB’s decision to not Institute Trial is final and non-appealable. 37 C.F.R. § 42.71(c). But see Request for Rehearing. 37 C.F.R. § 42.71(d).

    Both parties to a PTAB Proceeding also have a statutory right to seek a Stay of Litigation of pending district court litigation. For CBM Review, parties have the right to seek immediate, interlocutory, de novo review of a district court’s decision to grant or deny a Stay of Litigation. Pub. L. No. 112-29 § 18(b)(2), 125 Stat. 284–341.
    In Ex Parte Reexaminations, only the Patent Owner is a party to the proceeding. The Patent Owner may appeal a decision of the CRU — first to the PTAB and then to the Federal Circuit.

    Asserted Patent:
    a patent that a Patent Owner enforces, typically by filing suit or threatening to do so.
 
 
 
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