News & Analysis as of

Patent Ownership

Aqua Products Levels the Playing Field at the PTAB

by Latham & Watkins LLP on

By giving patent owners a more effective tool for amending claims during an IPR proceeding, the Federal Circuit’s latest en banc decision changes the way stakeholders approach these proceedings. Key Points: - The burden...more

March-in Rights and Compulsory License in the United States

March-in rights in the US were created in 1980, as part of the Bayh-Dole Act. Simply stated, when the US government funds research that results in patents, it obtains rights to those patents. These rights are retained even...more

The PTAB Authorizes Additional Motion To Amend Briefing in View of Aqua Products

by Knobbe Martens on

The Board authorized petitioner Kingston to file a Response to the patent owner’s Reply to petitioner’s Opposition to Motion to Amend, based on the Federal Circuit’s en banc holding that the burden to establish...more

Petitioner has the Burden of Proving Unpatentability of Amended Patent Claims in IPRs

by Cozen O'Connor on

During an inter partes review (IPR) proceeding concerning Aqua Products, Inc.’s (Aqua) U.S. Patent No. 8,273,183 (the ‘183 patent), the Patent Trial and Appeal Board denied Aqua’s motion to amend certain ‘183 patent claims....more

It May Have Just Gotten a Little Easier to Amend Claims in an IPR

A Factionated Federal Circuit Holds that Petitioner has the Burden to Show Unpatenability - In Aqua Products, Inc., v. Matal, [2015-1177] (October 4, 2017), a plurality of the Federal Circuit en banc held that §316(e)...more

Burden of Proving Unpatentability of Amended Claims Placed on IPR Petitioners

by Jones Day on

In an en banc decision, the Federal Circuit in Aqua Products, Inc. v. Matal addressed the question of who bears the burden of proving that claims amended during inter partes review ("IPR") proceedings are or are not...more

General Plastic Industrial Co. v. Canon Kabushiki Kaisha: PTAB Explains Factors Considers for Follow-On Petitions

On September 6, 2017, an expanded panel of the Patent Trial and Appeal Board issued an “informative” decision in General Plastic Industrial Co., Ltd, v. Canon Kabushiki Kaisha setting forth the Board’s framework for analyzing...more

Federal Circuit Overturns PTAB Fact-Finding Regarding Conception of Invention

by Jones Day on

In IPR2014-01198, the PTAB found that the patent owner failed to prove that the patented invention was conceived prior to the date of the prior art, and thus concluded that the patent was unpatentable. The Federal Circuit...more

Federal Circuit Rejects Some USPTO Requirements For Amending Claims During IPR Proceedings

by Brooks Kushman P.C. on

On October 4, 2017, the U.S. Court of Appeals for the Federal Circuit issued an en banc decision rejecting certain procedures adopted by the Patent Trial and Appeal Board (PTAB or Board) limiting a patent owner’s ability to...more

Federal Circuit Places The Burden Of Persuasion For Motions To Amend In IPRs On Petitioners

by Knobbe Martens on

The Federal Circuit issued an en banc decision instructing the PTAB to assess patentability of amended claims in IPR proceedings without placing the burden of persuasion on the patent owner. Aqua Products, Inc. v. Matal, No....more

AQUA PRODUCTS: The Federal Circuit Shifts The Burden of Proof On Amending Claims During An IPR From The Patent Owner To The...

The United States Court of Appeals for the Federal Circuit’s recent decision in Aqua Products Inc., v. Matal materially changes the burden of proof associated with the patentability of amended claims during an inter partes...more

Petitioners Bear Burden Of Proving Claims Amended During IPR Unpatentable . . . For Now

by Jones Day on

In yesterday’s decision in Aqua Products, Inc. v. Matal, No. 15-1177 (Fed. Cir. Oct. 4, 2017) (en banc), the Federal Circuit issued five opinions, spanning 148 pages, addressing the question of who bears the burden of proving...more

CAFC Eases Amendment Process In IPR Proceedings

by Foley & Lardner LLP on

Today in Aqua Products, Inc. v. Matal, a fractured Court of Appeals for the Federal Circuit (CAFC) sitting en banc decided to flip the burden of persuasion onto petitioners in IPR proceedings to show that an amendment is not...more

Aqua Products, Inc. v. Matal: En Banc Decision on Motions to Amend Claims in AIA Post-Grant Proceedings Issues

by Brinks Gilson & Lione on

Those who were hoping for a clear standard to emerge as a result of the Federal Circuit’s grant of en banc review on the issue of burdens of proof for motions to amend in post-grant proceedings under the American Invents Act...more

Amending claims may be getting easier in post-grant proceedings, at least for now

by Thompson Coburn LLP on

In a highly fractured case, the full Federal Circuit today in Aqua Products, Inc. v. Matal, No. 2015-1177, found that the burden of persuasion rests on the petitioner to show that proposed claims in an inter partes review...more

In IPRs, Petitioner Must Show Claim Amendments Unpatentable

by Morgan Lewis on

A recent Federal Circuit ruling shifts the burden to petitioners, which will likely lead to patent owners filing more motions to amend....more

Assignor Estoppel Is Not a Defense in IPR

by McDermott Will & Emery on

The Patent Trial and Appeal Board (PTAB) designated as precedential its 2013 decision that assignor estoppel is not a defense for patent owners in inter partes review (IPR) proceedings. Athena Automation Ltd. v. Husky...more

Federal Circuit Concludes that PTAB Not Justified in Placing Burden of Persuasion on Patent Owners When They Seek to Amend Claims...

After several months of consideration, the U.S. Court of Appeals for the Federal Circuit sitting en banc in Aqua Products, Inc. v. Matal has concluded that, under the current rules, the U.S. Patent and Trademark Office is not...more

CAFC Shifts the Burden for IPR Claim Amendments from the Patent Owner to the Petitioner

In Aqua Products Inc. v. Matal, a highly fractured en banc Federal Circuit determined that the PTAB, in ruling whether to allow claim amendments in an IPR proceeding, can no longer place the burden to establish the...more

Intellectual Property Law - September 2017

Looking Through an IP Lens at Blockchain and Cryptocurrency - Why it matters: With headline news ranging from J.P. Morgan CEO Jamie Dimon and Russian President Vladimir Putin to the Winklevoss twins and Floyd “Money”...more

CRISPR: How will it change our lives?

by Allen & Overy LLP on

CRISPR One giant breakthrough; a mass of complexities - The discovery and successful harnessing of the gene editing technology, CRISPR, promises to be one of the most significant breakthroughs of our age. But a complex...more

How to Lose an IPR but Amend Your Claims in Reexam and Keep Your Patent

by Knobbe Martens on

On August 30, 2017, the PTAB issued a Final Written Decision in M & P Golf, LLC (d/b/a Cool Clubs) v. Max Out Golf, LLC, IPR2016-00784, Paper 43 (P.T.A.B August 30, 2017), entering adverse judgement on the original patent...more

Follow-on IPR Petitions are Unfair to Patent Owners and an Inefficient Use of the Process

In General Plastic Industrial Co., Ltd. v. Canon Kabushiki Kaisha, IPR2016-01357, Paper 19, (September 6, 2017), and IPR2016-01358, IPR2016-01359, IPR2016-01360, and IPR2016-01361, an expanded panel of the PTAB denied...more

Secondary Considerations Win Again

by Jones Day on

As we have previously discussed (on February 1, March 1, March 30, and May 19), reliance on secondary considerations of non-obviousness has been hit or miss for patent owners trying to convince PTAB panels that the secondary...more

Lower Threshold for Indefiniteness Confirmed by PTAB in Ex Parte McAward

The courts have long stated that one goal of patent law is to provide certainty to both inventors and the public regarding the law that is applied in determining the metes and bounds of a patent claim....more

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