Motion to Amend

News & Analysis as of

PTAB Opens Door for Amendments in Post-Grant Review Proceedings

In a decision that sends a clear message to Patent Owners that the Patent Trial and Appeal Board (PTAB) is opening the door for amendments in post grant review proceedings, on July 15, 2015 the PTAB issued a new order...more

Doubling Down on Idle Free

In Masterimage 3D, Inc. v. Reald Inc., IPR2015-00040, Paper 42 (July 15, 2015), the Board instructed that patent owners seeking to amend their applications should still follow all of the requirements set forth in Idle Free...more

PTAB Issues Representative Order Clarifying Motion to Amend Analysis in Idle Free Systems

Yesterday the Patent Trial and Appeal Board (“Board”) added a recent order to its list of Representative Orders, Decisions, and Notices. See MasterImage 3D, Inc. v. RealD Inc., IPR2015-00040, Paper 42 (PTAB July 15, 2015). ...more

PTAB Highlights Motion to Amend Decision

Another day, another key decision from the PTAB. This time, the Board has highlighted a Motion to Amend opinion entered in MasterImage 3D, Inc. v. RealD, Inc., IPR2015-00040, decided by six Administrative Patent...more

District Court Denies Motion to Amend Complaint to Add New Patents Even Though Patents Had Not Issued at Time of Original Filing...

Plaintiff West View Research ("West View") filed five separate patent infringement complaints on the same date against various automobile manufacturers. Each action asserted a combination of patents, all from the same patent...more

IP Newsletter - July 2015

In This Issue: - En Banc Federal Circuit Abandons “Strong” Presumption That a Limitation Is Not Subject to 35 U.S.C. § 112, Paragraph 6 - Supreme Court Rejects Belief of Invalidity Defense for Inducement in Commil...more

Don't Overplay Your Hand In The Business Court

When you last heard about London Leasing LLC v. Arcus, the Business Court had entered a default in March 2015 against two of the Defendants for what I called their "defiant and obnoxious conduct." It then seemed like...more

Lessons From the Rare Grant of an IPR Motion to Amend

Although many Patent Owners have complained about the high hurdles for amending claims in an IPR, the Board’s decision in Riverbed Technology, Inc. v. Silver Peak Systems, Inc. IPR2013-00403 shows that the requirements are...more

Federal Circuit Reverses Unreasonable PTAB Claim Construction, Upholds Idle Free Standard for Motions to Amend

The Federal Circuit decision in Microsoft Corp. v. Proxyconn, Inc., addressed several important issues relating to post-grant patent trials conducted by the USPTO Patent Trial and Appeal Board (PTAB), including the PTAB’s...more

Federal Circuit Issues First Reversal & Remand of an Inter Partes Review in Microsoft Corporation v. Proxyconn, Inc. Addressing...

The Federal Circuit issued its first reversal and remand of a final decision in an inter partes review issued by the Patent Trial and Appeal Board (“PTAB”). In Microsoft Corporation v. Proxyconn, Inc., No. 14-1543, a panel...more

PTAB Grants Fourth Motion to Amend in an IPR Proceeding

For only the fourth time in its history, the Patent Trial and Appeal Board (“PTAB”) has granted a motion to amend in an inter partes review (“IPR”) proceeding, finding all substitute claims proposed by the patent owner...more

Patent Trial and Appeal Board Grants Rare Motion to Amend Claims in Inter Partes Review

On June 5, 2015, a three-judge panel at the Patent Trial and Appeal Board (“PTAB”), granted a motion to amend in an inter partes review (“IPR”) proceeding, ruling that the patentee Neste Oil Oyj (“Neste”) could amend the...more

MLB Litigation Brief: 4th Circuit Hostile Work Enviro, Class Action Trends Cause Concern, Low-Wage Non-Competes & More

Survey Says Increasing Number of Class Actions Most Important Litigation Trend: Norton Rose Fulbright recently released its global 2015 Litigation Trends Annual Survey, which compiles litigation trends and data gathered...more

Motion To Join Additional Party Comes Too Late

Thynge, C.M. J. Magistrate recommends that plaintiff’s motion to amend its complaint to add infringement claims against non-party Microsoft be denied. Plaintiff sought to join Microsoft in November, 2014, which it...more

NC Business Court: Motions To Amend And The Statute Of Limitations

Maybe you have the same nightmare that I do. You have moved to amend your Complaint to add a new defendant. The statute of limitations is about to run, but your motion to amend was made before the end of the limitations...more

USPTO makes changes to AIA post grant proceedings

The U.S. Patent and Trademark Office will be making a series of rule changes to America Invents Act reviews. Some will be effective immediately, others will be implemented in phases. The rule changes are a direct response to...more

District Court Denies Motion for Leave to Amend Answer to Assert Affirmative Defense of Patent Misuse

The defendants in this patent infringement action filed several motions for leave to amend their answers to include various affirmative defenses, including: (1) the affirmative defense of patent misuse; (2) the affirmative...more

Trademark Review | March 2015

Registration Cancelled Where Services Related to Mark Not Provided - Playdom, Inc. filed a petition to cancel Couture’s mark, arguing that the registration was void because Couture did not use the mark in commerce as of...more

Federal Circuit Review | March 2015

Patent Office’s Decision To Institute IPR Not Reviewable - In IN RE CUOZZO SPEED TECHNOLOGIES, LLC, the Federal Circuit held it lacks jurisdiction to review the Patent Office’s decision to institute inter partes review....more

PTAB Update -- The Board Grants Its Second Motion to Amend (At Least in Part)

For only the second time, the Patent Trial and Appeals Board ("PTAB" or "Board") granted a motion to amend claims. However, even though these two current motions were only granted-in-part, the fact that some claim amendments...more

And Cats and Dogs Living Together . . .

Well perhaps not the mass hysteria that Dr. Venkman anticipated in Ghostbusters, but the granting of a motion to amend is still an unusual occurrence. However, in Riverbed Technology Inc. v. Silver Peak Systems, Inc.,...more

Patentee May Cancel but May Not Substitute Claims when Proposed Amended Claims Are Not Shown To Be Unobvious

Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd. - Addressing the burden of establishing the patentability of claim amendments in inter partes review (IPR), the U.S. Patent and Trademark Office Patent Trial and...more

PTAB Update -- Amending Claims in an IPR Proceedings

Just what does it take to amend your claims during an IPR proceeding before the PTAB? Of course, the America Invents Act ("AIA") specifically provides that Patent Owners may file one motion to amend the claims. AIA, §...more

Proposed Claims in IPR Motions to Amend Can Now Be Placed in Appendix

The PTAB recently sent out an email alert, directing practitioners to its order providing guidance on Motions to Amend in Corning Optical Comm. RF, LLC v. PPC Broadband, Inc., IPR2014-00441, Paper 19. The Order stemmed from...more

PTAB Guides Patent Owners on Motions to Amend

The Board recently added an order in Corning Optical Communications RF, LLC v. PPC Broadband, Inc., IPR2014-00441, to its list of Representative Decisions on Motion to Amend on the Board’s web site. The decision outlines in...more

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