Federal Circuit Boosts PTAB Amendment Scrutiny

Fenwick intellectual property partner Stuart Meyer talked to Law360 about a recent Federal Circuit decision that affirms the Patent Trial and Appeal Board can reject proposed amended patent claims under Alice.

Back in 2012 when the America Invents Act—which created the PTAB—was new, Meyer was quoted in the National Law Journal as saying that the AIA painted with a “broad brush,” leaving it to the PTO to determine specifics via rulemaking. He repeated that “broad brush” theme here, explaining that as a result “inevitably questions are going to arise about implementation details” and this is “just the latest in the list.” He told Law360 that the majority and the dissent "couldn't be more different” on their perspectives. “So there's certainly something for everybody who wants to take this decision and say that it can be applied to something else as well.”

"It'll be interesting to see whether there's a request for rehearing en banc," Meyer said. "We have two more levels that we could potentially go on this issue, so it's not necessarily final."

The full article is available on Law360 (subscription required).