by Jones Day's PTAB Team | Apr 7, 2017 | Amendment Practice, Pharmaceutical
By Lisamarie LoGiudice, Ph.D. and J. Patrick Elsevier, Ph.D. In Amerigen Pharmaceuticals Limited v. Shire LLC, IPR2015-02009 (March 31, 2017), the PTAB granted Shire’s Motion to Amend the claims in U.S. Reissued Patent RE 42,096, listed in the FDA’s Orange Book as...
by Jones Day's PTAB Team | Jan 13, 2017 | Amendment Practice, Pharmaceutical
By J. Jason Williams and J. Patrick Elsevier, Ph.D. On January 4, 2017, in a final written decision in IPR2015-01490, the PTAB found 17 claims of a patent directed to methods of treating iron disorders by administering certain iron carbohydrate complexes were...
by John Marlott | Dec 13, 2016 | Amendment Practice, Federal Circuit Appeal
By John Marlott As we reported earlier (link), the en banc Federal Circuit is currently considering two important questions involving the PTO’s rules for claim amendments and the PTAB’s handling of motions to amend during IPR proceedings, In re: Aqua Products, Inc.,...
by John Marlott | Nov 8, 2016 | Amendment Practice, Federal Circuit Appeal
By John Marlott Claim amendments in IPRs are statutorily authorized by the AIA. 35 U.S.C. § 316(d)(1) provides that “[d]uring an inter partes review instituted under this chapter, the patent owner may file 1 motion to amend the patent in 1 or more of the following...
by Jones Day's PTAB Team | Jul 5, 2016 | Amendment Practice
On June 21, 2016, the PTAB issued a Final Written Decision in CBM2015-00040 (consolidated with CBM2015-00160) where both Google and Apple challenged the patentability of ContentGuard’s U.S. Patent No. 7,774,280, entitled “System and Method for Managing...
by Jones Day's PTAB Team | Apr 29, 2016 | Amendment Practice
On April 22, 2016, the PTAB granted a motion to amend for only the sixth time since institution of the AIA in its decision of Shinn Fu Company of America, Inc., et al. vs. The Time Hanger Corporation (IPR2015-00208, Paper 24). The patent at issue relates to “a method...
