Motion to Amend

News & Analysis as of

Dismissal of TCPA Claims for Lack of Standing Does Not Mandate Remand to the State Court

After granting summary judgment for lack of standing against a plaintiff who bought multiple cell phones and numbers for purposes of filing TCPA lawsuits, the Court was faced with a Motion to Amend Judgment wherein Plaintiff...more

Switching Consumer Device to Ad-Supported Environment Is Not Deceptive under New York Law

If your company sells a smart device to a consumer, can it later turn the device into a paid advertising platform? Can it do so without advanced disclosure?  A recent court ruling suggests the answer is “yes,” at least in New...more

Even with a Road Map, Only One Dubious Claim Navigates Preemption

Here’s another guest post, this time from Reed Smith‘s Jaimee Farrer.  This post concerns PMA preemption, and a second opinion largely getting rid of a case that we blogged about before.  As always, Jaimee deserves all the...more

In re Aqua Products, Inc. -- CAFC Grants Rehearing En Banc to Consider PTAB Motions to Amend

On Friday, August 13, 2016, the Federal Circuit granted a petition for rehearing en banc filed in the In re Aqua Products, Inc. case to consider two questions related to the PTAB's treatment of Motions to Amend in IPR...more

En Banc Federal Circuit To Review Standards for Amending Claims During AIA Proceedings

In a rare grant of a petition for rehearing en banc, the court decided that an appeal “warrants en banc consideration” of who bears what burden when amending in an IPR. In re: Aqua Products, No. 15-1177, slip op. at 2 (Fed....more

It Ain’t Over ‘Till It’s Over

It seems that the majority of patent applications, including those that eventually issue as patents, face a “final” rejection at some point. “Final” does not not always mean final, however, and there are at least eight...more

Burden on Motion to Amend in IPR

Applying its own precedent, the US Court of Appeals for the Federal Circuit confirmed that the burden remains on the patent owner to demonstrate the patentability of substitute claims over the art of record in an inter partes...more

PTAB Grants Late Motion to Amend, But Amended Claims Fail to Breathe Life into Patent

Addressing the standards for a motion to amend claims during an inter partes review (IPR) proceeding, the Patent Trial and Appeal Board (PTAB or Board) granted a motion to amend the claims in an IPR, but ultimately denied...more

Federal Circuit Review | June 2016

The PTAB Does Not Have to Consider New Arguments Raised in IPR Reply Briefs - In Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd., Appeal No. 2015-1693, the Federal Circuit upheld a PTAB decision finding of...more

Filing of Cancellation Prior to Registration’s Fifth Anniversary Allows Later Addition of Otherwise Time-Barred Non-use Claim

Ashland Licensing & Intellectual Property LLC (“Ashland”) petitioned on June 6, 2013, to cancel two registrations owned by Sunpoint International Group USA Corp. (“Sunpoint”). Following discovery, Ashland moved to amend to...more

First PGR Final Written Decisions – Look a Lot Like IPR/CBM Decisions

Despite the overwhelming popularity of IPR proceedings since their inception, about three and a half years ago, Post Grant Review has, to date, been little used. There are probably valid reasons for this low popularity,...more

The PTAB Review - June 2016

Post-Grant Review Proceeding Filings Ramp Up In addition to inter partes review (IPR) and covered business method (CBM) review proceedings, the America Invents Act (AIA) provides for post-grant review (PGR) proceedings. PGR...more

In re Aqua Products, Inc.: Federal Circuit Continues To Uphold PTAB Limits on Motions To Amend

Although the America Invents Act permits patent owners to file motions to amend claims in a patent under review, see e.g., 35 U.S.C. § 316(d), patentees generally have been unsuccessful in seeking amendments. The USPTO has...more

PTAB Grants Rare Motion to Amend

Unlike reexamination proceedings, inter partes review (IPR) proceedings rarely allow amendments to the claims to overcome a prior art invalidity challenge. In nearly all cases, the challenged claims of an IPR remain the same...more

Federal Circuit Patent Updates - May 2016

Ruckus Wireless, Inc. v. Innovative Wireless Solutions (No. 2015-1425, 1438, 5/31/16) (Prost, Reyna, Stark) - May 31, 2016 3:11 PM - Reyna, J. Affirming summary judgment of non-infringement of patents based on...more

Patent Owner Must Show Patentability Over Art of Record to Amend Claims in IPR

In In re Aqua Products, Inc., [2015-1177] (May 25, 2016), the Federal Circuit affirmed the PTAB’s denial of the patent owner’s motion to amend in IPR2013-00159. The Federal Circuit made quick work of the PTAB’s placing...more

Shifts in Amendments at the PTAB

Despite another year of attempts to amend in IPR and CBM, success is still rare. But is a change coming? In the summer of 2015, the PTAB issued its final written decision in REG Synthetic Fuels LLC v. Neste Oil OYJ,...more

PTAB Motion to Amend Study Reveals Opportunities and Risks

The Patent Trial and Appeal Board (PTAB) recently released its Motion to Amend Study on post-grant proceedings to date (4/30/2016). Of the 4,850 total petitions filed, 1,539 had been instituted and completed trials, and...more

IPR Motions to Amend: Rays of Hope Despite Gloomy Statistics

The America Invents Act permits patent owners to move to amend claims of a patent subject to inter partes review. However, attempts to amend claims have been largely unsuccessful to date, and some of the hurdles patent owners...more

Janssen v. Celltrion Hearing Coverage: Motion to Stay Denied; Motion to Amend PO Granted

The District Court for the District of Massachusetts (Judge Wolf) recently decided two pending motions in Janssen v. Celltrion: - ..Plaintiffs’ motion to stay litigation on the ‘471 patent (covering infliximab) pending...more

USPTO Provides Insight on PTAB Amendment Motions

On Monday, May 9, 2016, the U.S. Patent and Trademark Office published information on Patent Trial and Appeal Board (PTAB) trials regarding motions to amend claims. The Acting Chief Administrative Patent Judge, Nathan...more

A Non-illusory Opportunity to Amend

The Patent Trial and Appeal Board ("Board") recently granted a motion to amend. A successful motion to amend is rare; only six have been granted to date. The case is Shinn Fu Co. of America Inc. et al. v. The Tire Hanger...more

Industry Trade Groups Renew Challenge to HUD Disparate Impact Rule

Two industry trade associations whose members sell homeowners insurance have been granted leave to file an amended complaint in their lawsuit challenging the Fair Housing Act (FHA) disparate impact rule (Rule) adopted by the...more

Amendments to the Rules of Practice for Trials Before the PTAB Take Effect May 2, 2016

The US Patent and Trademark Office has announced amendments to the Rules of Practice for Trials Before the Patent Trial and Appeal Board that will take effect on May 2, 2016. The amendments generally adopt the rules proposed...more

Federal Circuit Remands PTAB’s Denial of Motion to Amend in IPR - Nike, Inc. v. Adidas AG

Addressing a decision by the Patent Trial and Appeal Board (PTAB or Board) denying a motion to amend claims under inter partes review (IPR), the US Court of Appeals for the Federal Circuit remanded the matter to the Board for...more

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