News & Analysis as of

Patent Ownership Remand Appeals

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

Amazon’s Patent Evaluation Express (APEX) Program Has Declaratory Judgment Action Risks for Patent Owners

Amazon’s Patent Evaluation Express (APEX) program provides an expedited and low-cost tool for patent owners to stop the sale of infringing products on Amazon’s platform. But low cost does not mean low risk. The U.S. Court of...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - May 2024

SnapRays v. Lighting Defense Group, Appeal No. 2023-1184 (Fed. Cir. May 2, 2024) Our Case of the Week deals with an issue the Court has not addressed recently: the question of declaratory judgment jurisdiction....more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - April 2022 #2

Littelfuse, Inc. v. Mersen USA EP Corp., Appeal No. 2021-2013 (Fed. Cir. Apr. 4, 2022)‎ - Our Case of the Week focuses on the issue of claim construction, and, more specifically, the doctrine ‎of claim differentiation....more

McDermott Will & Emery

Patent Owners Beware: Serial Filings, Rent-Seeking May Be Grounds for Adverse Fee Award

McDermott Will & Emery on

The US Court of Appeals for the Federal Circuit vacated and remanded a district court’s denial of attorney’s fees to an accused infringer, finding the district court did not properly consider the Patent Owner’s manner of...more

Akin Gump Strauss Hauer & Feld LLP

Withdrawal of Petitioner from IPR Proceeding All But Ensures Success in Contingent Motion to Amend

On remand from the Court of Appeals for the Federal Circuit, the Patent Trial and Appeal Board granted patent owner’s motion to amend on the basis that the totality of the record did not demonstrate by a preponderance of the...more

Akin Gump Strauss Hauer & Feld LLP

Federal Circuit Clarifies Burden of Proof on Challenges to Identification of Real Parties-in-Interest in IPR Proceedings

In Worlds Inc. v. Bungie, Inc., the Federal Circuit remanded an appeal from an inter partes review (“IPR”) instructing the Patent Trial and Appeal Board (“Board”) to reweigh the evidence in a manner that placed the ultimate...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - September 2018 #2

PATENT CASE OF THE WEEK - Worlds Inc. v. Bungie, Inc., Appeal Nos. 2017-1481, -1546, -1583 (Fed. Cir. Sept. 7, 2018) In appeals from three inter partes reviews, the Federal Circuit vacated the PTAB’s decision...more

Schwabe, Williamson & Wyatt PC

Fresh From the Bench: Latest Federal Circuit Court Cases

Texas Advanced Optoelectronic Solutions, Inc. v. Renesas Electronics America, Inc., Appeal Nos. 2016-2121, -2208, -2235 (Fed. Cir. 2018)?- In an appeal from a jury trial, the Federal Circuit addressed numerous issues...more

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

Perspectives on the PTAB Newsletter - December 2017

The Perspectives on the PTAB Newsletter is designed to be a valuable resource for all stakeholders in the global patent arena throughout the patent life cycle. To that end, articles will provide perspectives from both sides...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

Akin Gump Strauss Hauer & Feld LLP

PTAB Grants Contingent Motion to Amend on Remand from Federal Circuit

On July 17, 2017, the Patent and Trial Appeal Board (the “Board”) granted in-part, Patent Owner’s conditional motion to amend on remand from an appeal to the Federal Circuit. In a final written decision issued in April 2015,...more

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