Motion to Amend

News & Analysis as of

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

Wise People Are Diligent

Johnstech Int. Corp. v. JF Microtechnology SDN BHD, Case No. 14-cv-02864-JD (Judge James Donato) - Buddha said, “To be idle is a short road to death and to be diligent is a way of life; foolish people are idle, wise...more

Mitchell International, Inc. v. Audatex North America, Inc. (PTAB 2016)

PTAB Ignores District Court Claim Construction, Finds Patent Invalid - On February 19, 2016, the USPTO Patent Trial and Appeal Board (PTAB) issued a final written decision in the Covered Business Method (CBM) patent...more

A Brand Must Allege Facts to Survive a Motion to Dismiss Induced Infringement Claims - Otsuka Pharmaceutical Co., Ltd. v. Zydus...

Addressing the pleading standard for induced infringement, the U.S. District Court for the District of New Jersey dismissed Otsuka Pharmaceutical’s claims finding that a formulaic recitation of the legal standard without...more

Federal Court Refuses To Reinstate Lesser Prairie Chicken Listing: What Now, And What’s Next?

Last fall a federal court in the Western District of Texas upheld a challenge to the U.S. Fish & Wildlife Service’s (Service) decision to list the lesser prairie chicken (LEPC) as a threatened species under the federal...more

Redaction Made In Royalty Reports Are Improper; Motion To Amend Complaint Comes Too Late

Defendants move to compel compliance with subpoenas directed to a non-party. The court relieved the non-party from any obligation to produce documents since the contested documents were also in the possession of plaintiffs....more

Battle Between Sneaker Makers Nike and Adidas Will Go Another Round

The Court of Appeals for the Federal Circuit decided an appeal earlier this month in a long-running battle between footwear manufacturers Nike and Adidas that gives Patent Owner Nike a partial (and perhaps fleeting) victory....more

IPR Survives Despite Petitioner Failure to Name All Real Parties of Interest - Mako Surgical Corp. v. Blue Belt Techs., Inc.

Addressing the real parties in interest (RPI) requirement for inter partes review (IPR) petitions, a panel for the Patent Trial and Appeal Board (PTAB or Board) declined to terminate an already instituted IPR, despite the...more

Board to Petitioner: No RPI, No IPR - Corning Optical Comm’s RF, LLC v. PPC Broadband, Inc.

Addressing the requirement to disclose the real parties-in-interest (RPI) for an inter partes review (IPR), the Patent Trial and Appeal Board (PTAB or Board) denied the petitioner’s request for rehearing regarding the...more

Motion to Amend in IPR Must Establish Patentability Over Prior Art from Original Prosecution - Prolitec, Inc. v. ScentAir...

Addressing whether a patentee must show that proposed claim amendments in an inter partes review (IPR) overcome not only the prior art in the IPR but also the prior art from the original prosecution, the U.S. Court of Appeals...more

Federal Circuit Provides Guidance on Motions to Amend in IPR

In Nike v. Adidas, the Federal Circuit today gave patent owners in IPR the beginnings of a roadmap for how to successfully amend claims in an IPR. Readers of this blog will know by now that the PTAB rarely grants motions to...more

39 Months of Inter Partes Review – By the Numbers

Welcome to the 12th volume of our IPR-PGR Report, reporting on the statistics that underlie Inter Partes Review and Post Grant Review proceedings. This quarter marked the second in a row in which the number of IPR filings per...more

CAFC Partially Relaxes IdleFree Requirements for Amendments During IPR

On February 11, 2016, in Nike v. Adidas (Fed. Cir. 2016), the Federal Circuit partially relaxed the hurdle for a patent owner to amend claims during an IPR or other AIA proceeding. This follows the PTAB’s own earlier partial...more

Motion to Amend CEQA Action Judgments to Make Additional Judgment Debtor Liable For Million Dollar Fee Award Not Barred By...

In a published opinion filed January 26, 2016, the Court of Appeal for the Fourth Appellate District (Division 2) reversed a trial court’s order denying CEQA plaintiffs’ motion to amend judgments entered four (4) years...more

Federal Circuit Review | January 2016

The Federal Circuit Will Review Appeals from Inter Partes Review Proceedings Under the “Substantial Evidence” Standard - In Merck & Cie v. Gnosis S.p.A., Appeal No. 2014-1779, the Federal Circuit affirmed a PTAB IPR...more

D.Mass. Invokes Public Disclosure Bar, Demands Specificity, and Refuses to Second-Guess FDA in Dismissing Axium/Onyx Qui Tam Case

It’s not as if the standard for amending pleadings is a particularly hot DDL topic, but here we go for the second time this week discussing a case where precisely that was at issue. This time the case was U.S. ex rel....more

D.Mass. Invokes Public Disclosure Bar, Demands Specificity, and Refuses to Second-Guess FDA in Dismissing Axium/Onyx Qui Tam Case

It’s not as if the standard for amending pleadings is a particularly hot DDL topic, but here we go for the second time this week discussing a case where precisely that was at issue. This time the case was U.S. ex rel....more

Know The Rules: How the Federal Circuit's Deferential Review of the Patent Trial and Appeal Board's Evolving Rules Can Impact Your...

The Patent Trial and Appeal Board (PTAB) has been notoriously shutting down attempts to amend claims during inter partes review proceedings, leading one Federal Circuit judge to remark that the option to amend “thus far...more

PTAB Update -- PTAB Claim Amendment Practice at the Federal Circuit

In another unsurprising turn, the Federal Circuit affirmed the motion-to-amend practice adopted by the PTAB in IPR proceedings. The majority opinion in Prolitec Inc. v. Scentair Technologies, Inc., authored by Chief Judge...more

Federal Circuit Approves Placing Burden on Patent Owner to Show Patentability Over Prior Art Cited in Original Prosecution History

In Prolitec, Inc. v. Scentair Technologies, Inc., [2015-1020] (December 4, 2015), the Federal Circuit affirmed the PTAB’s decision that claims of U.S. Patent No. 7,712,683 were unpatentable as anticipated under 35 U.S.C. §102...more

Federal Circuit Weighs in on IPR Again, and Judge Newman Regains Her Footing as Pro-Patent Crusader

The Federal Circuit issued another substantive, IPR-related opinion today in Prolitec, Inc. v. ScentAir Techs., Inc., 2015-1020 (Fed. Cir. Dec. 4, 2015) (appealing from IPR2013-00179). The Board had determined that each of...more

3 Years of Inter Partes Review – By The Numbers

Welcome to Harness Dickey’s Report on Litigation Practice before the United States Patent Office. Created by the America Invents Act, Inter Partes Review proceedings have already changed the face of patent litigation. Lower...more

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