Tag Archives: Motion to Amend

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

By Eric M. Brusca, Ph.D. on December 10, 2015 Posted in Amendments, Inter Partes Review

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

Federal Circuit Upholds PTAB’s Application of its Rules to Decide Motions to Amend

By Sandip H. Patel on June 17, 2015 Posted in Claim Construction, Inter Partes Review, Legislation

Update: Overruled in part byAqua Products, Inc. v. Matal. Earlier this week, we wrote about the post-hearing briefing the Federal Circuit invited in Microsoft Corp. v. Proxyconn, Inc., Case Nos. 2014-1542, -1543, Dkt. 49 (Fed. Cir. Apr. 13, 2015), and the questions it posed regarding the PTAB’s administration of inter partes review. The court issued … Continue Reading