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 United States Patent and Trademark Office (USPTO) has again extended the Motion to Amend (MTA) Pilot Program at the Patent Trial and Appeal Board (PTAB)....more
We recently posted about the panel opinion in Amazon.com v. Uniloc, a final written decision demonstrating how the PTAB has given heightened scrutiny to proposed substitute amended claims in an IPR. In addition to assessing...more
An IPR of issued patent claims is statutorily limited to prior art challenges based on patents and printed publications under § 102 (novelty) or § 103 (obviousness). The PTAB may not institute an IPR of existing patent claims...more
2/11/2019
/ Administrative Procedure ,
Appeals ,
Inter Partes Review (IPR) Proceeding ,
Motion to Amend ,
Patent Trial and Appeal Board ,
Patent-Eligible Subject Matter ,
Patents ,
Prior Art ,
Section 101 ,
Section 102 ,
Section 103 ,
Section 112
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
10/6/2017
/ Appeals ,
Burden of Persuasion ,
Claim Amendments ,
Inter Partes Review (IPR) Proceeding ,
Motion to Amend ,
Patent Ownership ,
Patent Trial and Appeal Board ,
Patent Validity ,
Patents ,
Post-Grant Review ,
Remand ,
Reversal ,
USPTO
Last year, the Federal Circuit vacated the Board’s original decision denying the patent owner’s motion to amend two claims in IPR2014-00090, holding that the Board erred by “insist[ing] that the patent owner discuss whether...more
8/2/2017
/ Administrative Procedure ,
Appeals ,
Inter Partes Review (IPR) Proceeding ,
Motion to Amend ,
Patent Trial and Appeal Board ,
Patent-Eligible Subject Matter ,
Patents ,
Prior Art ,
Section 101 ,
Section 102 ,
Section 103 ,
Section 112