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ARTICLE · 19 SEPTEMBER 2023

Federal Circuit: Preliminary Means Preliminary

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The Federal Circuit recently held that the Patent Trial and Appeal Board (PTAB) was within its discretion to reach different conclusions in a Final Written Decision (FWD)...

United StatesIntellectual Property
Ryan Dowell
Ryan Dowell
Matthew Hartman
Matthew Hartman
Rachel J. Elsby
Rachel J. Elsby
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The Federal Circuit recently held that the Patent Trial and Appeal Board (PTAB) was within its discretion to reach different conclusions in a Final Written Decision (FWD) than those provided in preliminary guidance regarding the patentability of amended claims. This discretion is rooted in the different standards applied at different stages of case progress, along with the development of a mature record throughout the case.

Background

Patent Owner Medytox appealed the FWD of a post-grant review in which the PTAB found that Medytox's amended claims—made as non-contingent substitutes1 for the originals—unpatentable for inter alia lack of enablement. The claims were amended as part of the Pilot Program Concerning Motion to Amend Practice and Procedures, which allows Patent Owners to request preliminary guidance from the PTAB when filing a motion to amend (MTA) and the option to file a revised MTA in response to that guidance, as well as any opposition from

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