News & Analysis as of

Motion to Amend

PTO’s Rehearing Petition in Bosch: Signaling Future Rulemaking After Aqua Products?

by Jones Day on

On February 5, 2018, the PTO filed a petition for rehearing of Bosch Auto. Serv. Sol’ns, LLC v. Matal, 878 F.3d 1027 (Fed. Cir., Dec. 22, 2017). The petition asks the panel “not . . . to alter its judgment, but only to...more

Federal Circuit Review - January 2018

by Knobbe Martens on

Where Parties Raise an Actual Dispute Regarding Claim Scope, the Court Must Resolve It In Nobelbiz, Inc. v. Global Connect, L.L.C., Appeal Nos. 2016-1104, 2016-1105, the Federal Circuit held that where parties raise an actual...more

PTAB Concurrence Provides Guidance on Burden of Proof for Claim Amendments

by McDermott Will & Emery on

In a final written decision, the Patent Trial and Appeal Board (PTAB) allowed a patent owner to amend one of the challenged claims. In a concurring opinion, Administrative Patent Judge (APJ) Fitzpatrick explained that the...more

PTAB Releases Another Update to Its Motions to Amend Study

On January 12, 2018, the U.S. Patent and Trademark Office's Patent Trial and Appeal Board announced that it had updated its Motion to Amend Study to include all AIA trials through the end of Fiscal Year 2017 (which ended on...more

Federal Circuit Holds En Banc That The PTAB’s Determination on Whether The One Year Time-Bar is Triggered in Inter Partes Review...

On January 8, 2018, the Federal Circuit issued its long-awaited en banc decision in Wi-Fi One, LLC v. Broadcom Corporation, No. 2015-1944, 2018 WL 313065 (Fed. Cir. Jan. 8, 2018). The issue before the en banc Court was the...more

PTAB Designates Informative Decisions on Timeliness of IPR Petitions

by Knobbe Martens on

In wake of the Federal Circuit’s Wi-Fi One decision, the PTAB has designated two of its decisions as informative on the issue of IPR petition timeliness under § 315(b). This statute provides that an IPR may not be instituted...more

CFPB defends judgment in enforcement action against biweekly mortgage payment companies

by Ballard Spahr LLP on

Despite the CFPB’s change in position after Mick Mulvaney’s appointment regarding the need for Nationwide Biweekly Administration to post a bond to stay execution of the $7.9 million judgment obtained by the CFPB, the CFPB...more

One More Dribble from Aqua

As explained in a recent post about Bosch Automotive Service v. Matal, the Federal Circuit held that the Aqua Products decision puts the burden on the IPR petitioner to show that a patentee’s proposed amendments do not comply...more

Bosch Automotive Service Solutions, LLC v. Matal

by Knobbe Martens on

Federal Circuit Summaries - Before NEWMAN, CHEN, and HUGHES. Appeal from the Patent Trial and Appeal Board. Summary: In inter partes review, the patent challenger bears the burden of proving that proposed amended...more

Aqua Holds Water; Board’s Denial of Motion to Amend Vacated Because Board Improperly Put Burden on Patent Owner

In Bosch Automotive Service Solutions, LLC v. Matal, [2015-1928] (December 22, 2017), the Federal Circuit affirmed the Board’s finding of unpatentability of claims 1, 4–15, and 20–22, of U.S. Patent No. 6,904,796, on a remote...more

PTAB Issues Order Proposing Claim Amendments to Patent Owner

by Knobbe Martens on

The PTAB issued an order stating that it would grant Patent Owner’s motion to amend claims upon Patent Owner accepting further claim amendments suggested by the judges in Taiwan Semiconductor Manufacturing Co. Ltd. v. Godo...more

PTAB Publishes Guidance on Motions to Amend in view of Aqua Products: Shifts Burden to…Itself

The Patent Trial and Appeal Board has issued its Guidance on Motions to Amend in view of the Federal Circuit’s long-awaited Aqua Products decision. In that splintered ruling, the Federal Circuit addressed the burden of proof...more

PTAB Issues Guidelines For Motions To Amend

by Pepper Hamilton LLP on

An en banc panel of the Court of Appeals for the Federal Circuit (CAFC) in the case of Aqua Products, Inc. v. Matal recently held that in an inter-partes (IPR) proceeding, the burden of persuasion rests with the challenger to...more

Federal Circuit Review - November 2017

by Knobbe Martens on

Fractured Federal Circuit Holds Patent Owner Does Not Bear Burden of Persuasion in IPR Motions to Amend - In Aqua Products, Inc. v. Matal, Appeal No. 2015-1177, the Federal Circuit, sitting en banc, held that a patent...more

PTAB “Clarifies” Procedures For Motions To Amend

by Orrick - IP Landscape on

On November 21, 2017, the PTAB released its “Guidance on Motions to Amend in view of Aqua Products.” This guidance states that a Patent Owner’s motion to amend now only has to meet the requirements of 35 U.S.C. §316(d), and...more

PTAB Guidance on Motions to Amend in View of Aqua Products

On November 21st, the PTAB issued guidance on motions to amend based on the Federal Circuit’s en banc decision in Aqua Products, Inc. v. Matal, 872 F.3d 1290 (Fed. Cir. 2017). In view of the Aqua Products decision, the PTAB...more

PTAB Provides Guidance on Motions to Amend

Since the Federal Circuit’s complicated, 5-opinion decision regarding motion to amend practice in Inter Partes Review proceedings, we have been awaiting developments that will teach us what life in a post-Aqua Products world...more

PTAB Issues Guidance on Motions to Amend in View of Aqua Products

The Patent Trial and Appeal Board (“PTAB” or “Board”) recently issued guidance on motions to amend in AIA trial proceedings following the Federal Circuit’s en banc decision in Aqua Products, Inc. v. Matal, 872 F.3d 1290 (Fed....more

PTAB Publishes Aqua Products Guidance Regarding Motions to Amend

by Jones Day on

On November 21st, the PTAB issued guidance for motions to amend in post-grant trials based on the Federal Circuit’s en banc decision in Aqua Products, Inc. v. Matal, 872 F.3d 1290 (Fed. Cir. 2017). In line with that...more

Jumping into the Deep End: Amendment Practice Post-Aqua Products

by WilmerHale on

In the U.S. Court of Appeals for the Federal Circuit’s recent en banc decision in Aqua Products, a deeply fractured court provides a glimpse into the perspectives that some of the judges have on post-grant practice at the...more

Issue Nine: PTAB Trial Tracker

by Goodwin on

Motions to Amend: Burden to Prove Amended Claims are Unpatentable Rests with Petitioner - On October 4, 2017, the Federal Circuit issued its long-awaited en banc opinion in Aqua Products, Inc. v. Matal, regarding the...more

Amending Complaints 101 By Judge Gross – Physiotherapy Holdings

by Fox Rothschild LLP on

In a 10-page decision signed November 6, 2017 in an adversary proceeding arising within the Physiotherapy Holdings bankruptcy (PAH Litigation Trust, case 15-51238), Judge Gross of the Delaware Bankruptcy Court denied a motion...more

Chris Lazarini Discusses Pro Rata Distribution of Assets in Receiver Case

by Bass, Berry & Sims PLC on

Bass, Berry & Sims attorney Chris Lazarini discussed a case involving the repercussions of the multi-billion dollar Ponzi scheme of Thomas Petters related to the management of the Stewardship Credit Arbitrage Fund, LLC...more

PTAB Provides Glimpse Of What Is Good Cause To Extend Trial

by Jones Day on

The PTAB may, where good cause exists, extend a trial up to six months beyond the required twelve month length pursuant to 35 U.S.C. §316(a)(11). On October 5, 2017, the PTAB issued its first “good cause” extension of a trial...more

PTAB Extends Deadline to Decide IPR Motion to Amend in view of Aqua Products

by Knobbe Martens on

The PTAB extended the deadline for issuing its IPR final written decision on a motion to amend by up to six months to provide additional time to consider the impact of the Federal Circuit’s recent en banc Aqua Products...more

191 Results
|
View per page
Page: of 8
Cybersecurity

"My best business intelligence,
in one easy email…"

Your first step to building a free, personalized, morning email brief covering pertinent authors and topics on JD Supra:
Sign up using*

Already signed up? Log in here

*By using the service, you signify your acceptance of JD Supra's Privacy Policy.
*With LinkedIn, you don't need to create a separate login to manage your free JD Supra account, and we can make suggestions based on your needs and interests. We will not post anything on LinkedIn in your name. Or, sign up using your email address.