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Prior Art Substitute Claims

Mintz - Intellectual Property Viewpoints

“Anything Goes” – Federal Circuit Says PTAB Can Use Any Means to Knock Out Substitute Claims (Uniloc v. Hulu: Part 2)

Yesterday we discussed the Federal Circuit’s decision in Uniloc 2017 LLC v. Hulu, LLC confirming the Board’s authority to review contingent substitute claims after the original claims have been held invalid by a federal...more

Haug Partners LLP

Uniloc v. Hulu - Federal Circuit Clash over Scope of PTAB Review of Substitute Claims

Haug Partners LLP on

WHAT DO WE KNOW? 1. On July 22, 2020, a sharply split Federal Circuit panel held that “[t]he PTAB correctly concluded that it is not limited by § 311(b) in its review of proposed substitute claims in an IPR, and that it...more

Jones Day

PTAB Finds Some Pipeline Patent Claims Patentable, Others Amendable

Jones Day on

In a rare successful motion to amend, the PTAB found certain claims of a pipeline monitoring systems patentable, and allowed substitution of amended claims for others deemed unpatentable. See Syrinix Inc. v. Blacoh Fluid...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

PTAB Strategies and Insights - June 2018: Western Digital Informs on Implementing Aqua for Motions to Amend

The first real post-Aqua guidance issued from the Board on June 1, 2018 for motions to amend. Western Digital Corp. v. SPEX Technologies, Inc., IPR2018-00082 and IPR2018-00084 (Paper 13). According to the Western Digital...more

Knobbe Martens

PTAB Grants-in-Part Rare Motion to Amend Based on Unexpected Results

Knobbe Martens on

The PTAB granted-in-part a patent owner’s motion to substitute claims based on evidence of secondary considerations of nonobviousness in Valeo North America, Inc. v. Schaeffler Technologies, AG & CO. KG, IPR2016-00502, Paper...more

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