Amendments

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Board Decision Grants Motion to Amend With Respect to One Substitute Claim and Denies Motion to Amend With Respect to Other Substitute Claim

The Board’s recent decision in Veeam Software Corp. v. Veritas Technologies, LLC, Case No. IPR2014-00090 (PTAB July 17, 2017), provides patent practitioners with a framework for analyzing proposed substitute claims.  The Board’s decision, granting patent owner’s motion to amend in part, should be considered in conjunction with the Federal Circuit’s decision in Veritas Technologies LLC … Continue Reading

Aqua Products Dissent Would Keep Burden for Amendments on Patent Owners

As discussed here, the en banc Federal Circuit vacated and remanded the PTAB’s decision in Aqua Products, Inc. v. Matal, determining that the PTAB erred in placing the burden of persuasion on the patent owner for proposed claim amendments. Four judges on the eleven-judge en banc panel dissented, and would have upheld the PTO’s rule, … Continue Reading

Fractured Federal Circuit Reallocates Burden of Proof in AIA Trials

An eleven-judge en banc panel of the Federal Circuit issued its long awaited decision in Aqua Products, Inc. v. Matal, Appeal 2015-1777, on October 4, 2017, vacating and remanding the IPR final decision for the PTAB to determine whether the patent owner’s proposed amended claims are patentable. The court’s decision includes five separate opinions, though … Continue Reading

Enactment of the STRONGER Patents Act Would Severely Limit PTAB Proceedings

The STRONGER (Support Technology & Research for Our Nation’s Growth and Economic Resilience) Patents Act of 2017 was recently introduced in the Senate.  The Act is an updated version of the STRONG Patents Act of 2015 that stalled in Congress.  Like its predecessor, the STRONGER Patents Act is designed to significantly modify the AIA trial … Continue Reading

Federal Circuit Upholds Cancellation of Micrografx Patent Claims for Anticipation

In recent non-precedential decisions, Micrografx, LLC v. Google Inc., Case No. 2015-2090 (Fed. Cir. Nov. 29, 2016) (Micrografx I) and Micrografx, LLC v. Google Inc. (Micrografx II), Case No. 2015-2091 (Fed. Cir. Nov. 29, 2016), the Federal Circuit upheld three IPR final written decisions canceling challenged claims of Micrografx patents for anticipation, and denying a … Continue Reading

Post-Filing Claim Amendments Don’t Change the Effective Filing Date for Post Grant Review

In considering a novel issue of Post-Grant Review (PGR) eligibility, the Patent Trial and Appeal Board followed the straightforward language of the America Invents Act (“AIA”), and longstanding precedent, holding that post-filing amendments to a pre-AIA patent application do not change its effective filing date and, thus, do not make it eligible for PGR.  David … Continue Reading

Who Must Bear the Burden of Proof Regarding Patentability of Amended Claims?

On August 12, 2016, the Federal Circuit issued an order vacating its decision in In re Aqua Products, Inc., 823 F.3d 1369 (Fed. Cir. 2016), and reinstating the appeal after granting the aggrieved patent owner’s petition for rehearing en banc.  We wrote about this decision a few months ago: The Federal Circuit confirmed in a … Continue Reading

“It’s a Bird, It’s a Plane, NO it’s a Granted Motion to Amend.”

We previously reported the May 9, 2016, Patent Office’s study that the PTAB rarely grants motions to amend.  There, we explained that patent owners rarely file motions to amend and, even when such motions are filed, the PTAB rarely grants such motions. Last week, in Google Inc. and Apple Inc., v. ContentGuard Holdings, Inc., Case … Continue Reading

An Overview of Amendments to the PTAB Rules

On June 30, 2016, lead APJ Jacqueline Wright Bonilla provided an overview of the new PTAB rules during the Biotechnology/Chemical/Pharmaceutical Customer Partnership (BCP) Conference.  The final rule on Amendments to the Rules of Practice for Trials Before the Patent Trial and Appeal Board, which we have previously discussed [April 21, 2016 and August 20, 2015] … Continue Reading

Board Need Not Consider Arguments Beyond Those Actually Raised By Patentee In Motion To Amend

An updated discussion of this issue is available here: Who Must Bear the Burden of Proof Regarding Patentability of Amended Claims? The Federal Circuit confirmed in a precedential opinion that the burden to prove patentability of an amended claim in an IPR proceeding rests squarely with the patentee, and in deciding a motion to amend … Continue Reading

PTAB Provides Procedural Guidance with Five Precedential Opinions

The Patent Trial and Appeal Board recently designated five opinions as “precedential.” Each of these opinions addresses procedural aspects of AIA proceedings, including requests for additional discovery, the one-year time period for filing a petition, amending claims, and requirements for PTAB consideration of a petition. A summary of each opinion follows.… Continue Reading

PTAB Grants Motion to Amend Claims

In IPR2015-00208, Shinn Fu petitioned for IPR of USPN 6,681,897 owned by Tire Hanger.  All five claims of the patent were drawn to methods of supporting vehicle wheels removed from a vehicle while on a service lift, wherein the supports would allow technicians to remove and replace the wheels without risking back injury by bending.  … Continue Reading

Groundhog Day . . . Again: Observations on the Oral Argument in Cuozzo Speed Technologies, LLC v. Lee

The much anticipated argument in Cuozzo Speed Technologies, LLC v. Lee occurred Monday, April 25, 2016 before the United States Supreme Court.  One can glean some insight from the Justices’ questions and remarks, but the ultimate outcome in this seminal decision remains uncertain.  The following reflects the tenor of the remarks of seven of the … Continue Reading

Another “Reasonable” Re-Interpretation by the Federal Circuit

In a recent decision appealing the PTAB’s finding of claims unpatentable in two different, but related re-examination proceedings, the Federal Circuit vacated and remanded the Board’s decisions based on reinterpretation of claim terms construed under the PTAB’s broadest reasonable interpretation (BRI) standard during the re-examination process (In re Varma, Appeal 2015-1502 and 2015-1667, Fed. Circ., … Continue Reading

Federal Circuit Provides Further Guidance on Administrative Procedures For Motions to Amend Claims

Update: Overruled in part by Aqua Products, Inc. v. Matal. In Nike, Inc. v. Adidas AG, Case No. 2014-1719 (Fed. Cir. Feb. 11, 2016) (appeal of IPR2013-00067), the Federal Circuit provided further guidance on the PTAB’s administrative procedures regarding motions to amend claims. After considering Nike’s argument that 35 U.S.C. § 316(e) places the burden … Continue Reading

Federal Circuit: Patent Owners Must Consider Prior Art from Prosecution History in Motion to Amend

Update: Overruled in part by Aqua Products, Inc. v. Matal.  In a subsequent order, the court vacated the portions of the panel’s and the PTAB’s decisions concerning the patent owner’s motion to amend, and remanded the case to the PTAB for proceedings consistent with the Aqua Products decision. In December 4, 2015, the Federal Circuit … Continue Reading

How I Learned to Stop Worrying and Love the Bomb: Response to IPO Panel on PTAB Proceedings

Recently, in the pages of this blog, we reported on the dire predictions made at the IPO Annual Meeting here in Chicago of the “end of days” for patents.  The purported culprits?  The PTAB and the America Invents Act’s newly enacted Inter Partes Review and Covered Business Method Review.  “Well, allow me to retort,” to … Continue Reading

Footnote on Claim Amendment More Interesting than Federal Circuit Holding?

Last Tuesday, for the first time ever, the Federal Circuit reversed the PTAB in an IPR decision by, among other things, ratcheting back the “broadest reasonable construction” standard for claim construction by declaring the PTAB’s construction “unreasonable.”  The Court said that, “[e]ven under the broadest reasonable interpretation, the board’s construction ‘cannot be divorced from the … Continue Reading
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