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Linda Liu & Partners

Ways to Amend the Claims in the Patent Invalidation Proceedings

Linda Liu & Partners on

When a patentee responds to the challenge in the patent invalidation proceedings in China, sometimes it is necessary to amend the claims in order to obtain a decision from the CNIPA to maintain the validity of the patent...more

Troutman Pepper

Federal Circuit Slams PTAB Amendment Policy

Troutman Pepper on

On October 4, 2017, the Court of Appeals for the Federal Circuit, sitting en banc, overruled an earlier panel decision and found that the Patent Trial and Appeal Board (PTAB) had been impermissibly placing the burden of...more

Akin Gump Strauss Hauer & Feld LLP

Federal Circuit Applies Prosecution History Estoppel to Issued Claims Based on Amendments Made to Previously Canceled Claims

Akin Gump Strauss Hauer & Feld LLP on

On September 8, 2016, the Federal Circuit affirmed a decision from the Eastern District of Virginia in which the district court held that UCB, Inc.’s Cimzia® antibody does not infringe Yeda’s U.S. Patent No. 6,090,923 (“the...more

McDonnell Boehnen Hulbert & Berghoff LLP

R+L Carriers, Inc. v. Qualcomm, Inc. (Fed. Cir. 2015) - Be Wary of Claim Amendments During Reexamination

McDonnell Boehnen Hulbert & Berghoff LLP on

Traditional patent law holds that a patentee of a patent that survives reexamination is only entitled to infringement damages for the time period between the date of issuance of the original claims and the date of issuance of...more

Orrick, Herrington & Sutcliffe LLP

Congress Continues to Promote Patent Reform Efforts

Orrick, Herrington & Sutcliffe LLP on

In recent years, Congress has devoted a great deal of attention to patent reform. Those efforts led in 2011 to passage of the Leahy-Smith America Invents Act (AIA), which was the most extensive revision of the patent laws in...more

Womble Bond Dickinson

Opportunity for Equivalents in Claim Amendments

Womble Bond Dickinson on

It is commonly held that the doctrine of equivalents is lost when claim amendments are made during patent prosecution. That is, any claim amendment that is made during patent prosecution surrenders or gives up elements which...more

McDonnell Boehnen Hulbert & Berghoff LLP

Federal Circuit Schedules Argument for First IPR Final Written Decision – In re Cuozzo Speed Technologies LLC

McDonnell Boehnen Hulbert & Berghoff LLP on

As we have been reporting, the U.S. Patent Office has requested comments on the trial proceedings under the America Invents Act. Out of the 17 issues outlined, the Office highlighted two for which it would especially...more

Mintz

International Patent Laws – Interview with Julian Crump, Managing Member, Mintz Levin's London, UK Office

Mintz on

Attorney Julian Crump, Managing Member of Mintz Levin's London, UK office, talks about the differences between patent laws in the US and the EU and the importance of identifying those differences at the outset of the...more

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