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Satisfying the Duty of Disclosure in AIA Trials

By Sandip H. Patel on Posted in Amendments, Inter Partes Review, IPR, Trial Procedures
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 … Continue Reading

Rare Circumstances in IPRs are Even Rarer With Poor Strategy

By Stephen J. Kudla on Posted in Amendments, Inter Partes Review, IPR, Sections 102/103
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 … Continue Reading

Fitbit Dodges a Bullet—Entitled to Appeal Portion of Apple’s Petition Which It Did Not Join

By Thomas L. Duston on Posted in Amendments, Appeals, Claim Construction, Joinder, Sections 102/103
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 … Continue Reading

The Long Run

By Sandip H. Patel on Posted in Amendments, Inter Partes Review, IPR
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 … Continue Reading

PTAB Revises Trial Practice Guide To Reflect Recent Decisions On Claim Construction, Petition and Motion Practice

By Raymond R. Ricordati, III on Posted in Amendments, Claim Construction, Discovery, Institution / Denial, Trial Procedures
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

USPTO to Patent Owners – Don’t Forget About Reexams and Reissues

By Heather R. Kissling on Posted in Amendments, Ex Parte, Inter Partes Review, IPR, Reexamination
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 … Continue Reading

Patent Office Announces New Amendments Procedure for AIA Trials

By Sandip H. Patel on Posted in Amendments, Inter Partes Review, Trial Procedures
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 … Continue Reading

Proposed Hatch-Waxman Amendment Would Effectively Eliminate IPR Challenges by Generics

By Chelsea M. Murray on Posted in Amendments, Inter Partes Review, Legislation
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 … Continue Reading

Written Description of a Genus Can Be Satisfied by Disclosure of Single Species in Predictable Arts

By Jennifer Burnette on Posted in Amendments, Section 112
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 … Continue Reading

Motion to Amend Substituting Claims Granted in Full, Possibly Reflecting the Change Wrought By Aqua Products

By Kate Nuehring Su on Posted in Amendments, Inter Partes Review
The Board recently granted a motion to amend, to replace unpatentable claims with proposed substitute claims, a rare occurrence that may signal a change compelled by Aqua Products (summarized here). In Apple, Inc. v. Realtime Data, LLC, Case No. IPR2016-01737 (PTAB March 13, 2018), the Board determined that all challenged claims were unpatentable and then … Continue Reading

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

By Kate Nuehring Su on Posted in Amendments, Inter Partes Review, IPR, Trial Procedures
The PTAB’s Chief Administrative Patent Judge issued a memorandum on November 21, 2017, providing guidance on motions to amend in view of the en banc decision of the Federal Circuit in Aqua Products, Inc. v. Matal, 872 F.3d 1290 (Fed. Cir. 2017) (discussed here and here).  The court in Aqua Products determined that the Board could … Continue Reading

Board Decision Grants Motion to Amend With Respect to One Substitute

By Kate Nuehring Su on Posted in Amendments, Inter Partes Review, IPR
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

By Michael R. Weiner on Posted in Amendments, Trial Procedures
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

By Sandip H. Patel on Posted in Amendments, Inter Partes Review, IPR, Trial Procedures
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

By Sharon M. Sintich, Ph.D. on Posted in Amendments, Appeals, Discovery, Estoppel, Institution / Denial, Inter Partes Review, IPR, Legislation, Post Grant Review, Real Party-in-Interest, Stays, Trial Procedures
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

By Michael R. Weiner on Posted in Amendments, Claim Construction, Inter Partes Review, IPR
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

By Michael Muczynski on Posted in Amendments, Institution / Denial, 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?

By Sandip H. Patel on Posted in Amendments, Appeals, Inter Partes Review, IPR, Trial Procedures
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.”

By Ryan J. Schermerhorn on Posted in Amendments, Claim Construction, Covered Business Method, Inter Partes Review, Post Grant Review, Sections 102/103
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

By Lynn L. Janulis, Ph.D. and Sharon M. Sintich, Ph.D. on Posted in Amendments, Claim Construction, Inter Partes Review
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

By Tiffany D. Gehrke on Posted in Amendments, Appeals, Sections 102/103
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
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