News & Analysis as of

Substitute Claims Patent Trial and Appeal Board

White & Case LLP

Federal Circuit Potentially Widens Door for PTAB to Identify Its Own Unpatentability Grounds for Substitute Claims

White & Case LLP on

On March 24, 2022, the Court of Appeals for the Federal Circuit criticized the Precedential Opinion Panel's application of its standard for when it is (and isn't) appropriate for the Patent Trial and Appeal Board to sua...more

Rothwell, Figg, Ernst & Manbeck, P.C.

In Hunting Titan v. DynaEnergetics, Federal Circuit Affirms Precedential Opinion Panel But Avoids Ruling on a Standard for Sua...

In 2018, Hunting Titan, Inc. filed a petition for inter partes review (“IPR”) of U.S. Patent No. 9,581,422 (“the ’422 patent”), which is owned by DynaEnergetics Europe GmbH, a manufacturer of industrial explosives. In...more

Knobbe Martens

Federal Circuit Review - March 2022

Knobbe Martens on

Claim Limitation Not Disclosed by Any Reference but Disclosed by “Proposed Combination” of References Is Obvious - In Hoyt Augustus Fleming v. Cirrus Design Corporation, Appeal No. 21-1561, the Federal Circuit held that a...more

McDermott Will & Emery

Only under Rare Circumstances Can the Patent Trial & Appeal Board Find Proposed Substitute Claims Unpatentable on Its Own

McDermott Will & Emery on

The US Court of Appeals for the Federal Circuit addressed, for the first time, the issue of when the Patent Trial & Appeal Board (Board) may raise a ground of unpatentability that was not advanced by a petitioner in relation...more

McDermott Will & Emery

Attempts to Appeal Institution Decision Is SIPCOed

McDermott Will & Emery on

Reinforcing the impact of the Supreme Court of the United States’ 2019 decision in Thryv v. Click-to-Call, the US Court of Appeals for the Federal Circuit reiterated that the Patent Trial and Appeal Board’s threshold...more

McDermott Will & Emery

Old Dawg, New Tricks: Bankruptcy Successor Is Also Inter Partes Re-Exam Successor

McDermott Will & Emery on

Reversing the Patent Trial and Appeal Board, the US Court of Appeals for the Federal Circuit concluded that because a plaintiff was a successor in bankruptcy, it was a successor in an inter partes re-examination. The Court...more

Morgan Lewis

USPTO Codifies Burden of Persuasion Rules for AIA Amendments at the PTAB

Morgan Lewis on

It has been argued that the Patent Trial and Appeal Board (PTAB or Board) cannot engage in rulemaking through decisions made by its administrative patent judges (APJs), even if those decisions are made precedential, as APJs...more

Jones Day

PTAB Touts Soaring MTA Pilot Program

Jones Day on

On December 3, 2020, the Patent Trial and Appeal Board (“PTAB”) released data regarding the usage and success rates of its Motion to Amend (“MTA”) Pilot Program (“Pilot”). All PTAB cases instituted on or after March 15, 2019,...more

Rothwell, Figg, Ernst & Manbeck, P.C.

Substitute Claims Proposed in an IPR are Subject to Patent Eligibility Review Under Section 101

In Uniloc 2017 LLC v. Hulu, LLC, Netflix, Inc. (July 22, 2020), the Federal Circuit held that the Patent Trial and Appeal Board (“the PTAB”) may consider, in its review of substitute claims proposed in an inter partes review...more

McDermott Will & Emery

PTAB May Reject Substitute Claims Under Any Basis of Patentability

The US Court of Appeals for the Federal Circuit considered for the first time whether a district court’s invalidity determination, when made final after all appeals are exhausted, divests the Patent Trial and Appeal Board...more

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

PTAB Strategies and Insights - July 2020: Federal Circuit Confirms PTAB's Ability to Consider Subject Matter Eligibility of...

On July 22, 2020, the U.S. Court of Appeals for the Federal Circuit (Federal Circuit) issued an opinion in Uniloc 2017 LLC v. Hulu, LLC & Netflix, Inc., No. 2019-1686 (Fed. Cir. 2020) authorizing the U.S. Patent Trial &...more

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

PTAB Strategies and Insights - July 2020

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

“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

Pillsbury Winthrop Shaw Pittman LLP

Section 101 Kills Substitute Claims in Inter Partes Review

The Federal Circuit recently held that substitute claims proposed by a patent owner in an IPR are not limited to patentability challenges under 35 U.S.C. §§102 and 103, and can be challenged under 35 U.S.C. §101. ...more

McDonnell Boehnen Hulbert & Berghoff LLP

Uniloc 2017 LLC v. Hulu, LLC (Fed. Cir. 2020)

Last week, in Uniloc 2017 LLC v. Hulu, LLC, the Federal Circuit ruled that the Patent Trial and Appeal Board may consider patent eligibility under 35 U.S.C. § 101 for substitute claims.  The appeal raises issues of finality...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

Troutman Pepper

IPR Decisions Are to Rely On The Adversarial Process

Troutman Pepper on

Hunting Titan, Inc. v. Dynaenergetics Europe GMBH, IPR2018-00600 (July 6, 2020) - Designated Precedential on July 6, 2020 - Petitioner Hunting Titan challenged Patent Owner Dynaenergetics’ claims based upon anticipation...more

Jones Day

Motion to Amend Available Only For Challenged Claims

Jones Day on

In Apple v. Uniloc 2017 LLC, the patent owner moved to amend the claims contingent on an unpatentability finding by the Board. The contingent amendment cancelled the original claims and replaced them with a new claim set. The...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

Nutter McClennen & Fish LLP

PTAB Update: Lectrosonics Designated as Precedential Providing Guidance on Amendment Practice in an Inter Partes Review

On March 7, 2019, the Patent Trial and Appeal Board (PTAB) designated the decision in Lectrosonics, Inc. v. Zaxcom as precedential. The order provides guidance and information on practice surrounding a patent owner’s motion...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

Jones Day

For Substitute Claims, “Possession is Nine-Tenths of the Law”

Jones Day on

On March 20, 2018, the PTAB issued a Final Written Decision in Kapsch TrafficCom IVHS Inc. v. Neology, Inc., Case IPR2016-01763, Paper 60 (PTAB Mar. 20, 2018), finding that Petitioner Kapsch TrafficCom IVHS Inc. (“Kapsch”)...more

Mintz - Intellectual Property Viewpoints

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

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

24 Results
 / 
View per page
Page: of 1

"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:
*By using the service, you signify your acceptance of JD Supra's Privacy Policy.
- hide
- hide