News & Analysis as of

Patent Trial and Appeal Board Claim Amendments United States Patent and Trademark Office

Sterne, Kessler, Goldstein & Fox P.L.L.C.

Resolving Claim Ambiguity via Reissue

Takeaways - -Intra-patent claim inconsistencies are errors correctible via reissue. -Subtle legal distinctions in reissue may require PTAB appeals. Patent prosecution errors occur. One such error that occurs is...more

McDermott Will & Emery

Less Is More: IPR Claim Amendments May Not Enlarge Claim Scope

McDermott Will & Emery on

The US Court of Appeals for the Federal Circuit affirmed a decision from the Patent Trial & Appeal Board denying a motion to amend claims during an inter partes review (IPR) proceeding, explaining that a claim amendment is...more

Fitch, Even, Tabin & Flannery LLP

Patent Term Adjustment is Not Available for Unsuccessful Appeals

On September 14, in SawStop Holding LLC v. Vidal, the Federal Circuit held that the owner of two patents was not entitled to patent term adjustment (PTA) based on delays associated with appeals of the USPTO’s initial...more

Jones Day

Trial Court Denies Amendment of Contentions To Add Reexam Claims Following Successful IPR

Jones Day on

What happens when patent claims are found unpatentable in inter partes review (“IPR”) and new claims are subsequently added to that patent through ex parte reexamination? The District Court for the Northern District of...more

White & Case LLP

Managing economic and social change toward a sustainable future: A new era for US patents

White & Case LLP on

How has President Trump's "America First" philosophy affected US patent policy? White & Case partners discussed what an evolving US patent policy will mean for other nations, and to propose effective responses....more

Knobbe Martens

Federal Circuit Review - November 2017

Knobbe Martens on

Fractured Federal Circuit Holds Patent Owner Does Not Bear Burden of Persuasion in IPR Motions to Amend - In Aqua Products, Inc. v. Matal, Appeal No. 2015-1177, the Federal Circuit, sitting en banc, held that a patent...more

WilmerHale

Jumping into the Deep End: Amendment Practice Post-Aqua Products

WilmerHale on

In the U.S. Court of Appeals for the Federal Circuit’s recent en banc decision in Aqua Products, a deeply fractured court provides a glimpse into the perspectives that some of the judges have on post-grant practice at the...more

Knobbe Martens

Federal Circuit Places The Burden Of Persuasion For Motions To Amend In IPRs On Petitioners

Knobbe Martens on

The Federal Circuit issued an en banc decision instructing the PTAB to assess patentability of amended claims in IPR proceedings without placing the burden of persuasion on the patent owner. Aqua Products, Inc. v. Matal, No....more

Jones Day

Petitioners Bear Burden Of Proving Claims Amended During IPR Unpatentable . . . For Now

Jones Day on

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 the burden of proving...more

Foley & Lardner LLP

CAFC Eases Amendment Process In IPR Proceedings

Foley & Lardner LLP on

Today in Aqua Products, Inc. v. Matal, a fractured Court of Appeals for the Federal Circuit (CAFC) sitting en banc decided to flip the burden of persuasion onto petitioners in IPR proceedings to show that an amendment is not...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

Federal Circuit Concludes that PTAB Not Justified in Placing Burden of Persuasion on Patent Owners When They Seek to Amend Claims...

After several months of consideration, the U.S. Court of Appeals for the Federal Circuit sitting en banc in Aqua Products, Inc. v. Matal has concluded that, under the current rules, the U.S. Patent and Trademark Office is not...more

McDermott Will & Emery

Federal Circuit Will Review PTAB Rules for Claim Amendments in AIA Reviews

The full US Court of Appeals for the Federal Circuit has issued an order granting en banc review of the Patent Trial and Appeal Board’s (PTAB’s or Board’s) rules governing amendments filed in the course of America Invents Act...more

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