Amendments

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Regulations & Guidelines - Satisfying the Duty of Disclosure in AIA Trials

In ClearOne, Inc. v. Shure Acquisition Holdings, Inc., Appeal 2021-1517, Slip Op. at 2 (Fed. Cir. June 1, 2022), the Federal Circuit affirmed a Patent Trial and Appeal Board order that refused to authorize a sanctions motion the petitioner requested after the Board issued its final written decision granting (in relevant part) the patent owner’s motion to substitute claims. As basis for the motion the petitioner alleged the patent owner violated its duty to disclose prior art. 
Continue Reading Satisfying the Duty of Disclosure in AIA Trials

In Hunting Titan Inc. v. DynaEnergetics GmbH & Co. KG, Case IPR 2018-00600 (PTAB Jul. 6, 2020), the Patent Trial and Appeal Board’s Precedential Opinion Panel (POP) vacated the decision of another Board panel to deny patent owner’s (DynaEnergetics) motion to amend. In that vacated decision, the Board had sua sponte determined the proposed substitute claims were anticipated, despite the petitioner’s (Hunting Titan) failure to advance such a position. After vacating the decision of the panel, the POP granted DynaEnergetics’ motion to amend and its request for rehearing of that panel’s final written decision finding DynaEnergetics’ claims unpatentable. 
Continue Reading Rare Circumstances in IPRs are Even Rarer With Poor Strategy

In Fitbit, Inc. v. Valencell, Inc., Appeal 2019-1048 (Fed. Cir. July 8, 2020), the Federal Circuit determined that Fitbit, who had successfully sought joinder in an IPR petition filed by Apple, had standing to appeal an adverse determination as to certain patent claims, despite Fitbit’s failure to join that portion of Apple’s Petition. The Federal Circuit went on to rule that the PTAB had erred in rejecting Apple’s arguments as to those claim, and remanded the matter to the Board for further review.
Continue Reading Fitbit Dodges a Bullet—Entitled to Appeal Portion of Apple’s Petition Which It Did Not Join

Adidas successfully petitioned the Patent Trial and Appeal Board in 2012 to review a Nike shoe patent. During that review, Nike filed a motion to amend the patent by canceling all claims and substituting four new claims. The Board canceled the patent claims and found the new claims unpatentable. Among other things, the Board said that Nike—the patent owner—did not establish the new claims were patentable over the prior art.
Continue Reading The Long Run

The Patent Trial and Appeal Board (PTAB) recently published a second update to its Trial Practice Guide (TPG). The TPG, initially released in 2012, was first updated in August 2018 (see here). This second update further revises and/or adds guidance relating to certain general procedures and many aspects of trial practice before the PTAB.
Continue Reading PTAB Revises Trial Practice Guide To Reflect Recent Decisions On Claim Construction, Petition and Motion Practice

Recently updated statistics from the USPTO provide little comfort for patent owners seeking to amend claims during an IPR proceeding.  The Motion to Amend Study, Installment 5 through FY2018, updated March 2019, reports that patent owners have filed a motion to amend in 326 of the 3,599 completed trials (9%) and in 90 of the 670 pending trials (13%).  Of the 326 motions filed in completed trials, the Board decided a motion to amend requesting to substitute claims in 205 trials (63%), and of those decided motions, Board granted or granted-in-part a motion to amend in only 21 of the 205 trials (10%).
Continue Reading USPTO to Patent Owners – Don’t Forget About Reexams and Reissues

For AIA trials instituted on or after March 15, 2019, the patent owner may opt-in to a pilot program the Patent Office implemented for motion to amend (“MTA”) practice and procedures in the PTAB’s administration of these trials. Today’s Federal Register (link) includes the Patent Office’s explanation of the program, which it proposed in October 2018. The Office’s explanation also includes its reply to comments the public offered in response to the proposal. Generally, the comments supported the proposed program, but expressed concerns over the tight timelines proposed. The implemented program appears to address those concerns.
Continue Reading Patent Office Announces New Amendments Procedure for AIA Trials

On October 29, 2018, the Patent and Trademark Office published a request for comments on a proposal to establish a new procedure by which patent owners may seek to amend their claims during inter partes review. Comments are due on or before December 14, 2018. The PTO proposes a pilot program implementing the new amendment process to begin shortly after the deadline for comments.
Continue Reading “Comments Anyone?”: PTO Makes Proposed New IPR Amendment Process

On June 13, 2018, Senator Orrin Hatch (R-UT) introduced to the Senate Judiciary Committee an amendment to restore the careful balance sought in the Hatch-Waxman Act, which provided incentives for both pharmaceutical innovation and drug affordability. The amendment, titled the Hatch-Waxman Integrity Act of 2018, would modify the IPR process for pharmaceuticals—under Hatch-Waxman and the BPCIA—and would amend sections of the Federal Food, Drug and Cosmetic Act that provide abbreviated pathways for generic drug and biosimilar product approval.
Continue Reading Proposed Hatch-Waxman Amendment Would Effectively Eliminate IPR Challenges by Generics

In Hologic, Inc. v. Smith & Nephew Inc., No. 2017-1389 (Fed. Cir. Mar. 14, 2018), the Federal Circuit concluded that disclosure of a species provides written descriptive support for a claimed genus where the invention was in a predicable field of art, the species was a well-known member of the genus, and other members of the genus were also well known. As a result, the court affirmed the PTAB’s decision that Smith & Nephew’s PCT application (the “Emanuel PCT”) had sufficient written description to qualify as a priority document, and therefore was not prior art. In reaching this decision, the court relied heavily on the fact that the field of the invention was a predictable art.
Continue Reading Written Description of a Genus Can Be Satisfied by Disclosure of Single Species in Predictable Arts

Resources & Info

Arthrex and the Supreme Court Resource Center

In United States v. Arthrex, Inc., the Supreme Court has heard whether 125+ PTAB decisions rendered through October 2019 must be remanded for new decisions. Read about how that issue developed through our post.

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Our Team

PTABWatch, provided by Marshall, Gerstein & Borun LLP, analyzes and reports recent developments concerning Post-Grant Proceedings at the Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office (USPTO), including Inter Partes Review (IPR), Post Grant Review (PGR), and Covered Business Method (CBM) proceedings.