News & Analysis as of

Section 101 Motion to Amend

McDermott Will & Emery

Not Just a Blip: Section 101 as Affirmative Defense

McDermott Will & Emery on

On appeal from a motion to dismiss based on subject matter eligibility, the US Court of Appeals for the Federal Circuit held that a district court appropriately analyzed certain claims as representative claims and that the...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

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

Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2020 Decisions: Nike, Inc. v. Adidas AG, 955 F.3d 45 (Fed. Cir....

The patent claim survival rate before the Patent Trial and Appeal Board continues to strongly favor petitioners. Accordingly, motions to amend the challenged claims have been growing among patent owners in inter partes...more

Goodwin

Issue Twenty-Nine: 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 monthly digest is designed to keep you up-to-date by highlighting interesting PTAB,...more

Rothwell, Figg, Ernst & Manbeck, P.C.

Substitute Claims Proposed in an IPR are Subject to Patent Eligibility Review Under Section 101

In Uniloc 2017 LLC v. Hulu, LLC, Netflix, Inc. (July 22, 2020), the Federal Circuit held that the Patent Trial and Appeal Board (“the PTAB”) may consider, in its review of substitute claims proposed in an inter partes review...more

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

PTAB Strategies and Insights - July 2020: Federal Circuit Confirms PTAB's Ability to Consider Subject Matter Eligibility of...

On July 22, 2020, the U.S. Court of Appeals for the Federal Circuit (Federal Circuit) issued an opinion in Uniloc 2017 LLC v. Hulu, LLC & Netflix, Inc., No. 2019-1686 (Fed. Cir. 2020) authorizing the U.S. Patent Trial &...more

Mintz - Intellectual Property Viewpoints

Dead on Arrival? Federal Circuit Majority Finds That Substitute Claims Live On (Uniloc v. Hulu: Part 1)

Last week a Federal Circuit panel in Uniloc 2017 LLC v. Hulu, LLC issued an important decision regarding inter partes review (IPR) before the Patent Trial and Appeal Board on two questions concerning contingent motions to...more

McDonnell Boehnen Hulbert & Berghoff LLP

Uniloc 2017 LLC v. Hulu, LLC (Fed. Cir. 2020)

Last week, in Uniloc 2017 LLC v. Hulu, LLC, the Federal Circuit ruled that the Patent Trial and Appeal Board may consider patent eligibility under 35 U.S.C. § 101 for substitute claims.  The appeal raises issues of finality...more

Jones Day

PTAB Bar Association – Thought Leader Summit Recap

Jones Day on

In November, the PTAB Bar Association held its annual Thought Leader Summit. The Summit highlighted recent changes to PTAB practice, with a keynote address from USPTO Director Andrei Iancu. In the opening remarks, Director...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - August 2019 #3

PATENT CASE OF THE WEEK - Nalpropion Pharmaceuticals, Inc. v. Actavis Laboratories, FL, Inc., Appeal No. 2018-1221 (Fed. Cir. Aug. 15, 2019) - This week’s Case of the Week focuses on issues relating to written...more

Alston & Bird

Patent Case Summaries

Alston & Bird on

A weekly summary of the precedential patent-related opinions issued by the Court of Appeals for the Federal Circuit and the opinions designated precedential or informative by the Patent Trial and Appeal Board....more

Jones Day

PTAB Makes Precedential Its Heightened Scrutiny Of Amended Claims In IPRs

Jones Day on

We recently posted about the panel opinion in Amazon.com v. Uniloc, a final written decision demonstrating how the PTAB has given heightened scrutiny to proposed substitute amended claims in an IPR. In addition to assessing...more

Jones Day

Amended Claims In IPRs Must Clear Higher Hurdle Than Original Claims

Jones Day on

An IPR of issued patent claims is statutorily limited to prior art challenges based on patents and printed publications under § 102 (novelty) or § 103 (obviousness). The PTAB may not institute an IPR of existing patent claims...more

Jones Day

Board Terminates Motion to Amend, Citing Inefficient Use of Resources

Jones Day on

The Board recently exercised its discretion to terminate trial and obviate the Patent Owner’s pending Motion to Amend, after the Federal Circuit affirmed a district court’s ruling that all of the challenged claims were...more

Knobbe Martens

Recent Federal Circuit Decisions Emphasize Effect of Factual Questions on Patent Eligibility

Knobbe Martens on

In two recent cases, the Federal Circuit addressed the role of factual questions in resolving patent eligibility under 35 U.S.C. § 101. The first case was Berkheimer v. HP Inc. and the second was Aatrix Software v. Green...more

Jones Day

PTAB Grants Rare Motion To Amend Patent Claim After Federal Circuit Remand

Jones Day on

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...more

Knobbe Martens

PTAB Grants-in-Part Rare Motion to Amend Based on Unexpected Results

Knobbe Martens on

The PTAB granted-in-part a patent owner’s motion to substitute claims based on evidence of secondary considerations of nonobviousness in Valeo North America, Inc. v. Schaeffler Technologies, AG & CO. KG, IPR2016-00502, Paper...more

Knobbe Martens

Federal Circuit Review | June 2016

Knobbe Martens on

The PTAB Does Not Have to Consider New Arguments Raised in IPR Reply Briefs - In Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd., Appeal No. 2015-1693, the Federal Circuit upheld a PTAB decision finding of...more

18 Results
 / 
View per page
Page: of 1

"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