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...
by Matthew Johnson | Nov 24, 2017 | Amendment Practice
By Matt Johnson On November 21st, the PTAB issued guidance for motions to amend in post-grant trials based on the Federal Circuit’s en banc decision in Aqua Products, Inc. v. Matal, 872 F.3d 1290 (Fed. Cir. 2017). In line with that decision, the PTAB will not place...
by S. Christian Platt | Oct 30, 2017 | Amendment Practice, PTAB News, Time Limits
By: Christian Platt and Richard Graham The PTAB may, where good cause exists, extend a trial up to six months beyond the required twelve month length pursuant to 35 U.S.C. §316(a)(11). On October 5, 2017, the PTAB issued its first “good cause” extension of a trial in...
by Greg Castanias | Oct 5, 2017 | Amendment Practice, Federal Circuit
By Greg Castanias, Jaclyn Stahl, John Marlott, and Dave Cochran In yesterday’s decision in Aqua Products, Inc. v. Matal, No. 15-1177 (Fed. Cir. Oct. 4, 2017) (en banc), the Federal Circuit issued five opinions, spanning 148 pages, addressing the question of who bears...
by John Marlott | Jul 30, 2017 | Amendment Practice, Federal Circuit
By Christian Damon and John Marlott Last year, the Federal Circuit vacated the Board’s original decision denying the patent owner’s motion to amend two claims in IPR2014-00090, holding that the Board erred by “insist[ing] that the patent owner discuss whether each...
