News & Analysis as of

Patent Litigation Motion to Amend Inter Partes Review (IPR) Proceeding

Erise IP

Eye on IPRs, October 2024: USPTO Issues Final PTAB Procedure Rules

Erise IP on

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

Jones Day

PTAB Forgives MTA Procedural Error

Jones Day on

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

McDermott Will & Emery

PTAB MTA Pilot Program to the Rescue

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

Jones Day

District Court Charts Middle Ground In Prosecution Bar

Jones Day on

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

Sheppard Mullin Richter & Hampton LLP

Navigating Revised Motions to Amend in Inter Partes Review as a Non-active, Joined Party

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

Akin Gump Strauss Hauer & Feld LLP

Protective Order Forecloses Participation of Litigation Counsel in Motion to Amend Process Before the PTAB

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

Goodwin

Issue 44: PTAB Trial Tracker

Goodwin on

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

Jones Day

PTAB Proposes Permanent MTA Pilot Program Rules

Jones Day on

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

Womble Bond Dickinson

USPTO Seeks to Cement PTAB Motion to Amend Pilot Program

Womble Bond Dickinson on

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

Fish & Richardson

USPTO Proposes Rules Updating Motion to Amend Practice Before the PTAB

Fish & Richardson on

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

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - January 2024 #4

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

Manatt, Phelps & Phillips, LLP

Proposed Claims Allowed Despite Including Amendments Not Responsive to Unpatentability Ground

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

Jones Day

Motion to Amend: Much to Admire?

Jones Day on

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

Jones Day

USPTO Requests Comments Regarding Motion to Amend Pilot

Jones Day on

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

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

Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2022 Decisions: Hunting Titan, Inc. v. DynaEnergetics Europe GmbH,...

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

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

Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2022 Decisions

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

Akin Gump Strauss Hauer & Feld LLP

Federal Circuit: Claim Amendments During IPR That Respond to Grounds of Unpatentability May Also Make Changes Unrelated to the IPR

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

Troutman Pepper

Federal Circuit Signals Appetite for Increased PTAB Discretion in Motions to Amend

Troutman Pepper on

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

Knobbe Martens

Federal Circuit Review - March 2022

Knobbe Martens on

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

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - March 2022 #4

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

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

2021 PTAB Year in Review: Analysis & Trends: Editors' Introduction

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

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

2021 PTAB Year in Review: Analysis & Trends

[co-author: Jamie Dohopolski] 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...more

Goodwin

Issue 36: PTAB Trial Tracker

Goodwin on

FORUM SELECTION CLAUSES MAY OR MAY NOT PRECLUDE PTAB REVIEW - In Kannuu Pty Ltd. v. Samsung Electronics Co., Ltd. & Samsung Electronics America, Inc., No. 21-1638 (Fed. Cir. Oct. 7, 2021), the Federal Circuit considered...more

American Conference Institute (ACI)

[Virtual Conference] PTAB Practice Briefing - December 2nd, 10:00 am - 6:00 pm EST

Year-End Analysis and Future Forecasts on the Most Significant Developments Impacting Post-Grant Proceedings. Attend ACI’s inaugural PTAB Practice Briefing virtually on December 2nd for in-depth discussions and year-end...more

Troutman Pepper

Motions to Amend: PTO Pilot Program Extended - Patents: Post-Grant Podcast

Troutman Pepper on

Please join Troutman Pepper’s Intellectual Property and Health Sciences practice groups for the fifth installment of their podcast series on strategy, trends, and other happenings at the PTAB. Moderated by Troutman Pepper...more

92 Results
 / 
View per page
Page: of 4

"My best business intelligence, in one easy email…"

Your first step to building a free, personalized, morning email brief covering pertinent authors and topics on JD Supra:
*By using the service, you signify your acceptance of JD Supra's Privacy Policy.
- hide
- hide