Patent Owner Unable to Change Inventorship During Remand, PTAB Litigation Blog
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At the Inter Partes review trial, Patent Owner attempted to swear behind Petitioner’s primary prior art reference by showing that the inventors of the asserted patents had conceived of the invention before the priority date of the reference. The Board determined that Patent Owner’s evidence was insufficient. Patent Owner appealed the Final Written Decision. During an unrelated remand, Patent Owner petitioned the USPTO for certificates of correction to add an inventor to the asserted patents. Thereafter, Patent Owner appealed again. Then, the Federal Circuit remanded after the USPTO granted Patent Owner’s petitions for certificates of correction, for determination of whether the change in inventorship changed the Board’s determination in its Final Written Decision.
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