Motions to Amend: PTO Pilot Program Extended - Patents: Post-Grant Podcast
Every month, Erise’s patent attorneys review the latest inter partes review cases and news to bring you the stories that you should know about: USPTO Issues Final Rules on PTAB Procedure - The U.S. Patent and...more
The Federal Circuit affirmed in part, reversed-in-part and remanded-in-part the Board’s decision in the inter partes review of U.S. Patent No. 8,265,096 (the “’096 patent”), and affirmed the Board’s decision as to the cross...more
Before Dyk, Prost, and Stark. Appeal from the Patent Trial and Appeal Board. Summary: Because the PTAB’s MTA Pilot Program’s core purpose is to allow patent owners to address errors or deficiencies in motions to amend, the...more
On review of a final written decision from the Patent Trial & Appeal Board in an inter partes review (IPR), the US Court of Appeals for the Federal Circuit found that all challenged claims were obvious but left open the...more
The U.S. District Court for the District of Delaware recently issued a protective order settling a dispute over the scope of a proposed prosecution bar. Aerin Medical Inc. v. Neurent Medical Inc., No. 23-756, Dkt. Nos. 66, 68...more
In CyWee Group LTD. V. ZTE (USA), Inc., No. 21-1855 (Fed. Cir. 2024), ZTE filed an IPR petition against U.S. Patent No. 8,441,438 (the ’438 patent) owned by CyWee, which the Patent Trial and Appeals Board (“the Board”)...more
In keeping with precedent, a judge in the District of Delaware issued an oral order restricting the extent of permissible activities for litigation counsel before the Patent Trial and Appeal Board. The order resolved a...more
The availability of post-grant proceedings at the Patent Trial and Appeal Board (PTAB) has changed the face of patent litigation. This periodic digest is designed to keep you up-to-date by highlighting interesting PTAB,...more
On March 4, 2024, the Patent Trial and Appeal Board (“PTAB”) of the United States Patent and Trademark Office (“USPTO”) issued a Notice of Proposed Rulemaking (“NPR”) regarding Motion To Amend (“MTA”) Practice and Procedures...more
In an appeal from a Patent Trial & Appeal Board finding of invalidity, the US Court of Appeals for the Federal Circuit held that the result-effective variable doctrine can apply even when there is no overlap between a claimed...more
The United States Patent and Trademark Office (USPTO) recently issued a Notice of Proposed Rulemaking seeking to revise its rules on amendment practice under the America Invents Act (AIA). Specifically, the USPTO is proposing...more
On February 13, the USPTO issued inventorship guidance for AI-assisted innovations. The guidance, effective as of February 13, 2024, emphasizes that AI-assisted inventions are not categorically unpatentable and the...more
The United States Patent and Trademark Office (USPTO) published a Notice of Proposed Rulemaking (NPRM) today proposing to update its rules governing motions to amend before the Patent Trial and Appeal Board (PTAB). ...more
Roku, Inc. v. International Trade Commission, Appeal No. 2022-1386 (Fed. Cir. Jan. 19, 2024) In an appeal from the International Trade Commission (the “Commission”), the Federal Circuit addressed a number of findings...more
In American National Manufacturing Inc. v. Sleep Number Corporation, the Federal Circuit held that so long as a proposed claim amendment does not enlarge the scope of the claims, does not add new matter and is responsive to a...more
Motions to amend (MTA) are becoming a more frequently used tool for patent owners litigating before the Patent Trial and Appeal Board (PTAB). When a patent is being challenged in an inter partes review (IPR) or post-grant...more
The USPTO continues to seek public feedback on PTAB procedures and potential rule changes. In addition to soliciting comments on the many proposed rule changes announced on April 21, 2023, the USPTO also recently issued a...more
Here, Hunting Titan petitioned for IPR of DynaEnergetics’ ’422 patent, asserting that the patent was anticipated in light of the Schacherer reference. The Board instituted the IPR and found all original claims unpatentable as...more
As part of the recovery from the global COVID-19 pandemic, the U.S. Court of Appeals for the Federal Circuit took steps to return to normal operations. It began requiring live oral arguments in August 2022 and, by November,...more
The Federal Circuit recently held that a Patent Owner could not use disclaimers argued in an IPR proceeding for claim construction within the same IPR proceeding. In CUPP Computing AS v. Trend Micro Inc., Case 20-2262,...more
In a recent decision, the Federal Circuit affirmed the PTAB’s policy of permitting claim amendments unrelated to the IPR proceedings when the amended claims also included amendments that respond to a ground of...more
Patent owners facing inter partes review (IPR) challenges have the option of filing a motion to amend as a contingency plan. This motion, accompanied by proposed substitute claims, allows the patent owner a fallback position...more
Claim Limitation Not Disclosed by Any Reference but Disclosed by “Proposed Combination” of References Is Obvious - In Hoyt Augustus Fleming v. Cirrus Design Corporation, Appeal No. 21-1561, the Federal Circuit held that a...more
Hunting Titan, Inc. v. DynaEnergetics Europe GMBH, Appeal Nos. 2020-2163, -2191 (Fed. Cir. March 24, 2022) - In a notable review of the USPTO’s new Precedential Opinions Panel, the Federal Circuit discussed the...more
Love it or hate it, ignore the USPTO Patent Trial and Appeal Board (PTAB) at your peril. The introduction of the PTAB as part of the America Invents Act over ten years ago has forever changed patent litigation. In its first...more