News & Analysis as of

Claim Amendments

McDermott Will & Emery

Less Is More: IPR Claim Amendments May Not Enlarge Claim Scope

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The US Court of Appeals for the Federal Circuit affirmed a decision from the Patent Trial & Appeal Board denying a motion to amend claims during an inter partes review (IPR) proceeding, explaining that a claim amendment is...more

Akin Gump Strauss Hauer & Feld LLP

Federal Circuit: Claim Amendments During IPR That Respond to Grounds of Unpatentability May Also Make Changes Unrelated to the IPR

In a recent decision, the Federal Circuit affirmed the PTAB’s policy of permitting claim amendments unrelated to the IPR proceedings when the amended claims also included amendments that respond to a ground of...more

Foley & Lardner LLP

Type C Patent Term Adjustment Requires Fully Successful Appeal

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In Sawstop Holding LLC v. Vidal, the Federal Circuit upheld the USPTO’s interpretation of the Patent Term Adjustment (PTA) statute that limits the availability of PTA for time spent appealing an Examiner’s rejection. The...more

Fitch, Even, Tabin & Flannery LLP

Patent Term Adjustment is Not Available for Unsuccessful Appeals

On September 14, in SawStop Holding LLC v. Vidal, the Federal Circuit held that the owner of two patents was not entitled to patent term adjustment (PTA) based on delays associated with appeals of the USPTO’s initial...more

Linda Liu & Partners

Experience Sharing on Claim Amendments on the Grounds of “Obvious Mistakes”

Linda Liu & Partners on

I. Background Introduction - In recent years, the number of foreign patent applications entering China exhibits a steady growth on a yearly basis. Foreign applications are required to be translated to Chinese in order to...more

Knobbe Martens

When Can the PTO Extend a Patent’s Term Due to Delay From an Appeal?

Knobbe Martens on

CHUDIK V. HIRSHFELD - Before Taranto, Bryson, and Hughes. Appeal from the United State District Court for the Eastern District of Virginia - Summary: An examiner’s self-reversal may not qualify as “reversing an...more

International Lawyers Network

The Supreme Court’s Adjudication on Whether a Post-grant Amendment of a Granted Patent Constitutes an Amendment of the Litigation...

When granted with a patent right, the patentee may file a request for amending the description, claim(s) or drawing(s) of the granted patent.  Hence, once an alleged infringer has presented prior evidence sufficient to...more

Manatt, Phelps & Phillips, LLP

Patent Held Invalid—Specification Disclaimer Prevented Claim to Earlier Priority Date

In Akeva L.L.C., v. Nike, Inc., the Federal Circuit held that a disclaimer in a specification that excluded a particular embodiment prevented later claims in the continuation patents from claiming the excluded embodiment,...more

McDonnell Boehnen Hulbert & Berghoff LLP

Baxalta Inc. v. Genentech, Inc. (Fed. Cir. 2020)

The Federal Circuit recently vacated a District Court decision by Federal Circuit Judge Dyk, sitting by designation, based on erroneous claim construction in Baxalta Inc. v. Genentech, Inc...more

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

PTAB Strategies and Insights - July 2020: Nexus: the PTAB's Objective Indicia of Non-Obviousness Analysis Under Fox Factory...

As reported in our December 2019 newsletter, in Lectrosonics v. Zaxcom the Patent Trial and Appeal Board (PTAB or Board) granted Zaxcom’s motion to amend and, under a nexus-analysis framework, found each of the substitute...more

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

Global Patent Prosecution - June 2020: Considerations When Appealing a Patent Application at the CNIPA

This article discusses aspects of ex parte appeals of patent applications before the China National Intellectual Property Administration (CNIPA). A patent applicant may appeal (submit a re-examination request) an examiner’s...more

Smart & Biggar

CIPO introduces new telephone amendments to increase efficiency of trademarks prosecution in Canada

Smart & Biggar on

On May 20th, 2020, in an attempt to improve the timeliness and efficiency of its services, the Canadian Intellectual Property Office formally allowed trademark examiners to enter amendments to trademark applications in...more

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

PTAB Strategies and Insights - April 2019: The Federal Circuit Clarifies The Notice Requirements Of The Administrative Procedure...

In Nike, Inc. v. Adidas AG, No. 19-1262 (Fed. Cir. Apr. 9, 2020), the Federal Circuit offered important guidance to Patent Trial and Appeal Board (PTAB) litigants regarding how the notice requirements of the Administrative...more

McDonnell Boehnen Hulbert & Berghoff LLP

Genentech, Inc. v. Iancu (Fed. Cir. 2020)

The Federal Circuit affirmed the Patent Trial and Appeal Board's (PTAB) claim construction (and inter partes review (IPR) decision invalidating claims for obviousness) in it recent Genentech, Inc. v. Iancu decision, and also...more

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

Federal Circuit Appeals From The PTAB: Summaries of Key 2019 Decisions: Honeywell International Inc. v. Arkema Inc., 939 F.3d 1345...

Honeywell owns U.S. Patent 9,157,017, which claims automotive air-conditioning systems. The application to the ’017 patent had originally described and recited claims for flouroalkane compounds for use in refrigeration...more

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

PTAB Strategies and Insights - December 2019: Amending Claims in IPR: Objective Indicia May Be a Strategic Guide Post

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

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

PTAB Strategies and Insights - December 2019

The PTAB Strategies and Insights newsletter provides timely updates and insights into how best to handle proceedings at the USPTO. It is designed to increase return on investment for all stakeholders looking at the entire...more

Mintz - Intellectual Property Viewpoints

PTAB allows Amending Claims on Grounds not raised by Petitioner, but were Addressed by the District Court in its Finding of...

To amend challenged claims during an Inter Partes Review (IPR), the patent owner must show that the proposed amendment responds to a ground of unpatentability at issue in the IPR trial. But in a recent final written decision...more

Knobbe Martens

Prosecution History Estoppel Bars Infringement Claim Under Doctrine of Equivalents

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PHARMA TECH SOLUTIONS, INC. v. LIFESCAN, INC. Before Moore, Reyna, and Stoll. Appeal from the United States District Court for the District of Nevada. Summary: Claims for infringement under the doctrine of equivalents...more

Jones Day

Trial Court Denies Amendment of Contentions To Add Reexam Claims Following Successful IPR

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What happens when patent claims are found unpatentable in inter partes review (“IPR”) and new claims are subsequently added to that patent through ex parte reexamination? The District Court for the Northern District of...more

Snell & Wilmer

Appealing the Rejection of a Patent Application

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Sometimes appealing an Examiner’s rejection is the only practical option. If no claims of valuable scope have been allowed or indicated as allowable, and all clarifying claim amendments, supporting evidence and salient...more

Foley & Lardner LLP

Doctrine Of Equivalents Not Barred By Claim Amendments

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Recent Federal Circuit decisions demonstrate that the doctrine of equivalents is alive and well, and not always barred by claim amendments. In both Ajinomoto Co. v. ITC and Eli Lilly and Co. v. Hospira, Inc., the Federal...more

Knobbe Martens

The Tangential Exception to Prosecution History Estoppel

Knobbe Martens on

ELI LILLY AND COMPANY v. HOSPIRA, INC. Before Lourie, Moore, and Taranto. Appeal from the District Court for the Southern District of Indiana. Summary: A narrowing claim amendment does not necessarily surrender all...more

White & Case LLP

Managing economic and social change toward a sustainable future: A new era for US patents

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How has President Trump's "America First" philosophy affected US patent policy? White & Case partners discussed what an evolving US patent policy will mean for other nations, and to propose effective responses....more

Mintz - Intellectual Property Viewpoints

Effect of A Restriction Requirement on Prosecution History Estoppel

The decision whether to issue a Restriction Requirement during patent prosecution lies with the patent examiner, not the patent applicant. A Restriction Requirement can nevertheless trigger prosecution history estoppel that...more

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