by Cary Miller | Nov 2, 2018 | Amendment Practice
By Cary Miller, Ph.D. The USPTO has proposed a pilot program intended to make it easier to amend claims before the PTAB. (See the USPTO’s Request for Comments on Motion to Amend Practice and Procedures in Trial Proceedings under the America Invents Act before the...
by Albert Liou | Oct 17, 2018 | Amendment Practice
By Albert Liou The Board recently exercised its discretion to terminate trial and obviate the Patent Owner’s pending Motion to Amend, after the Federal Circuit affirmed a district court’s ruling that all of the challenged claims were invalid for lack of patentable...
by Matthew Johnson | Aug 14, 2018 | Amendment Practice, PTAB News
By: Matt Johnson On Monday, the PTAB issued its fourth installment of its ongoing motion to amend study, providing details on motions to amend filed and decided through March 31, 2018. Patent owners have filed a motion to amend in 305 of the 3,203 completed trials...
by Emily Tait | Apr 5, 2018 | Amendment Practice
By: Emily Tait On March 20, 2018, the PTAB issued a Final Written Decision in Kapsch TrafficCom IVHS Inc. v. Neology, Inc., Case IPR2016-01763, Paper 60 (PTAB Mar. 20, 2018), finding that Petitioner Kapsch TrafficCom IVHS Inc. (“Kapsch”) had proven by the...
by Matthew Johnson | Mar 27, 2018 | Amendment Practice, PTAB Trial Basics
By: Josh Nightingale and Matthew Johnson In its en banc decision in Aqua Products, Inc. v. Matal, the Federal Circuit addressed the question of who bears the burden of proving that claims amended in IPR proceedings are or are not patentable. The decision, issued on...
by Emily Tait | Feb 13, 2018 | Amendment Practice, Federal Circuit
By: Jason Garr and Emily Tait On February 5, 2018, the PTO filed a petition for rehearing of Bosch Auto. Serv. Sol’ns, LLC v. Matal, 878 F.3d 1027 (Fed. Cir., Dec. 22, 2017). The petition asks the panel “not . . . to alter its judgment, but only to clarify a...