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On review of a final written decision from the Patent Trial & Appeal Board in an inter partes review (IPR), the US Court of Appeals for the Federal Circuit found that all challenged claims were obvious but left open the...more
On March 4, 2024, the US Patent & Trademark Office published a Notice of Proposed Rulemaking seeking to revise its Motion to Amend (MTA) pilot program practice in connection with certain America Invents Act (AIA) proceedings....more
In American National Manufacturing Inc. v. Sleep Number Corporation, the Federal Circuit held that so long as a proposed claim amendment does not enlarge the scope of the claims, does not add new matter and is responsive to a...more
The Federal Circuit recently held that the Patent Trial and Appeal Board (PTAB) was within its discretion to reach different conclusions in a Final Written Decision (FWD) than those provided in preliminary guidance regarding...more
In re Cellect, LLC, Appeal Nos. 2022-1293, -1294, -1295, -1296 (Fed. Cir. Aug. 28, 2023) In a significant appeal from ex parte reexamination proceedings before the Patent Trial and Appeal Board, the Federal Circuit...more
Motions to amend (MTA) are becoming a more frequently used tool for patent owners litigating before the Patent Trial and Appeal Board (PTAB). When a patent is being challenged in an inter partes review (IPR) or post-grant...more
The USPTO hosted a “Boardside Chat” on June 15, 2023, to discuss the Motion to Amend Pilot Program, including the recent call for public input on the PTAB’s existing claim amendment procedures and potential rule changes. The...more
The Federal Circuit recently held that a Patent Owner could not use disclaimers argued in an IPR proceeding for claim construction within the same IPR proceeding. In CUPP Computing AS v. Trend Micro Inc., Case 20-2262,...more
As a Patent Owner in an instituted Inter Partes Review (IPR), there are dozens of considerations to bear in mind – from strategically approaching depositions and maximizing expert testimony, to drafting the final say in your...more
In our earlier blogs, we previously discussed when to file an amendment, when not to file an amendment, and the procedural guidelines for filing amendments pursuant to 35 U.S.C. § 316(d)(1). Below are four tips for improving...more
In earlier blogs, we discussed when to amend and when not to amend claims in an inter partes review (“IPR”) pursuant to 35 U.S.C. § 316(d)(1). Below are guidelines on the procedural aspects of filing a motion to amend...more
The USPTO’s Motion to Amend (MTA) Pilot Program has been in effect for nearly two years. The Pilot Program applies to all AIA trials instituted on or after March 15, 2019. Broadly, the Pilot Program’s objective is to provide...more
Since the inception of inter partes reviews (IPRs) and post grant reviews (PGRs) under the America Invents Act, the option for a patent owner to file a motion to amend its claims was always present, but motions to amend were...more
On July 6, the USPTO’s Precedential Opinion Panel (POP) issued a precedential decision in Hunting Titan, Inc. v. DynaEnergetics Europe GmbH, Case IPR2018-00600, Paper 67 (P.T.A.B. July 6, 2020) (precedential), explaining the...more
Motions to amend have historically been viewed as an exercise in futility. The Director of the United States Patent and Trademark Office (USPTO), Andrei Iancu, agrees, having publicly stated that “[s]ome have suggested that...more
As PTAB practitioners know, statistics on successful motions to amend are quite dismal. But in a recent case, the PTAB shed light on what may be a successful strategy for patent owners to amend their claims in an Inter Partes...more
On remand from the Court of Appeals for the Federal Circuit, the Patent Trial and Appeal Board granted patent owner’s motion to amend on the basis that the totality of the record did not demonstrate by a preponderance of the...more
The US Court of Appeals for the Federal Circuit reversed a dismissal of a complaint for failing to state a claim under FRCP 12(b)(6), finding error in the district court’s use of judicial notice to do fact-finding outside the...more
On November 30, 2018, the PTAB filed an opinion addressing two procedural issues in Aver Information Inc. v. Pathway Innovations and Technologies, Inc., Case IPR2017-02108, including failure to meet spacing requirements and...more
With their proposed new procedure, the USPTO hopes to make claim amendments via a motion to amend more of a reality for patent owners in PTAB trials....more
On June 5, 2018, Chief Judge David Ruschke and Vice Chief Judge Tim Fink of the Patent Trial and Appeals Board (PTAB) participated in a webinar providing new guidance on three topics: (1) the new claim construction standard...more
On June 1, 2018, the PTAB announced new guidance on motions to amend in AIA trials. In view of the decision from the United States Court of Appeals for the Federal Circuit in Aqua Products, Inc. v. Matal, 872 F.3d 1290...more
In its en banc decision in Aqua Products, Inc. v. Matal, the Federal Circuit addressed the question of who bears the burden of proving that claims amended in IPR proceedings are or are not patentable. The decision, issued on...more
In 2011, Congress enacted the America Invents Act and created new mechanisms to challenge issued claims at the Patent Office. The goal was to expeditiously resolve issues of patent validity in response to the public outcry...more
PTAB Grants-in-Part Motion to Amend Claims, Even Though Federal Circuit Previously Invalidated the Claims - In Semiconductor Components Industries, LLC v. Power Integrations, Inc., IPR2016-01600, Paper 35 (PTAB Feb. 14,...more