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
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
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
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
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
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
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
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
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
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
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
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
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
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
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
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
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
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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