Motion to Amend

News & Analysis as of

Another Requirement to a Successful Motion to Amend Claims

It is getting hard to keep track of all the hoops and hurdles that need to be navigated in bringing a successful motion to amend in an inter partes review proceeding. Each new decision seemingly raises the bar further. The...more

The Heavy Burden of a Motion to Amend

LaRose Indus., LLC v. Capriola Corp. - Addressing issues of claim construction and the requirements of a motion to amend, the Patent Trial and Appeal Board (the Board) ordered the claims at issue were unpatentable and...more

Assignor Estoppel and Motion to Amend Claims Both Tough Sells in Inter Partes Review

Athena Automation Ltd. v. Husky Injection Molding Systems Ltd. - Addressing a patent owner’s request to dismiss an inter partes review (IPR) based on assignor estoppel and motion to amend the claims, the U. S. Patent...more

Patent Dispositions for August 22, 2014

Dispositions - In Zodiac Pool Systems, Inc. v. Aqua Products, Inc., IPR2013-00159, Paper 71 (August 22, 2012), the Board held that claims 1–9, 13, 14, 16, and 19–21 of U.S. Patent No. 8,273,183 are unpatentable, and...more

Amending Dependent Claims — Listing Doesn’t Count Toward Page Limits

In Micro Motion, Inc. v. Invensys System, Inc., IPR2014-00179, Paper 22, IPR2014-00167, Page 24 (August 11, 2014), the Board informed the patent owner that it must address each proposed substitute independent claim in the...more

A Second Chance on a Motion to Amend

In Microsoft Corporation v. Surfcast, Inc., IPR2013-00292, Paper 77 (June 5, 2014), the PTAB authorized the patent owner to file a corrected motion to correct what it deemed potential ambiguities in the proposed substitute...more

PTAB Grants First Motion for Leave to Amend in Inter Partes Review

Representatives from the U.S. Patent and Trademark Office, led by Janet Gongola, Senior Advisor to the Deputy Director of the U.S. Patent and Trademark Office, spent the better part of last month traversing the U.S....more

FCA Relator Petitions Supreme Court Seeking Resolution of Circuit Split Regarding Applicability of Rule 15(a) to Post-Judgment...

Dr. Helen Ge, the relator in United States ex rel. Ge v. Takeda Pharmaceutical Co Ltd., recently filed a petition for a writ of certiorari in the United States Supreme Court seeking review of the First Circuit’s decision that...more

A Primer On Claim Amendments in Post-Grant Review

Bloomberg Inc. et al. v. Markets-Alert Pty Ltd. - In the final written decision of a covered business method (CBM) review, the Patent Trial and Appeal Board (PTAB) sided with the petitioner, canceling all claims under...more

Judge Sweet Denies Motion To Further Amend Complaint - Ferring B.V. et al. v. Allergan, Inc. et al.

Case Number: 1:12-cv-02650-RWS (Dkt. 88) - In a dispute dating from 2003 concerning the ownership of patent involving desmopressin, a synthetic hormone used to treat excessive urine production, Judge Sweet denied...more

PTAB Invalidates Patent in First IPR Trial of a Design Patent

On April 21, 2014, the Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office issued a final written decision in the first inter partes review proceeding involving a design patent (IPR2013-00072). In...more

Encore Explanation of the Requirements of a Motion to Amend

In Tandus Flooring, Inc. v. Interface, Inc., IPR2013-00333, Paper 38 (April 16, 2014), the Board gave an encore of the myriad of requirements to file a successful motion to amend, something no patentee has been able to...more

Standard For Amending Claims In IPR May Need To Change

The Idle Free decision denied the patent owner’s motion to amend claims on the ground that the patent owner had not proven the patentability of the claims over the prior art. Remarkably, the decision makes no reference to the...more

The Other Shoe Drops

Case Number: 1:11-cv-04530 (Dkt. 121) - Judge Forest found a design patent covering fuzzy slippers to be anticipated and not infringed at summary judgment. The court had previously found the claims obvious, but the...more

Motions to Amend in Inter Partes Review Proceedings - A Quick Reference ; IIPI/BBNA AIA Post-Grant Patent Practice Conference

Statutory Basis: 35 U.S.C. § 316(d). Rule: 37 C.F.R. § 42.121. Guidance: Office Patent Trial Practice Guide (OPTPG), 77 Fed. Reg. 48766-67. PTAB Decisions: Some discussed below. 1) Board approach...more

Inter Partes Review Client Alert Series: Amending Claims During Inter Partes Review

The Patent Trial and Appeal Board continues to make clear that amending claims during post-grant inter partes review (“IPR”) challenges is far different from amending claims during original examination or reexamination. The...more

Motion to Amend Infringement Contentions Denied Where Plaintiff Waited Too Long After Claim Construction Ruling

Plaintiff Power Integrations, Inc. ("Power Integrations" or "PI") filed a patent infringement action against Defendants Fairchild Semiconductor Int'l, Inc., Fairchild Semiconductor Corp. (collectively, "Fairchild") and System...more

Judge Denies Motion To Amend Order Vacating Designation Of Slickspot Peppergrass As Threatened Under The Endangered Species Act

On December 4, 2012, the U.S. District Court for the District of Idaho denied a request to amend its previous order reversing the U.S. Fish and Wildlife Service's (Service) 2009 Final Rule listing the slickspot peppergrass...more

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