Topic: Motions to amend

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Federal Circuit Rejects PTAB’s Analysis of Motion to Amend

In Veritas Technologies LLC v. Veeam Software Corporation, the Federal Circuit concluded that the PTAB erred in denying Patent Owner’s motion to amend claims in an IPR proceeding and remanded to the PTAB for further consideration of the substitute claims submitted in the motion. No. 2014-00090 (Fed. Cir. Aug. 30, 2016). In the IPR, the … Continue reading

New PTAB Rules Take Effect May 2, 2016

The Patent Office has published a final rule with amendments to 37 CFR § 42, et seq., governing IPR, CBM, PGR, and derivation proceedings before the Patent Trial and Appeal Board. The new rules take effect Monday, May 2, 2016 and apply to all AIA petitions filed on or after that date and to any ongoing proceeding … Continue reading

Federal Circuit re-affirms and clarifies PTAB rules for motions to amend claims

In Nike, Inc. v. Adidas AG, the Federal Circuit re-affirmed the PTAB’s requirement that in IPR proceedings the Patent Owner must show the patentability of proposed substitute claims over both the prior art of record in the IPR and other prior art known to the Patent Owner. No. 2014-1719 (Fed Cir. Feb. 11, 2016). However, … Continue reading

Federal Circuit addresses use of BRI standard and motions to amend claims in IPRs

In Microsoft Corp. v. Proxyconn, Inc., — F.3d —, 2015 WL 3747257 (Fed. Cir. June 16, 2015), the Federal Circuit once again affirmed that the broadest reasonable interpretation (“BRI”) standard of claim construction applies in IPRs, providing further guidance on applying the standard. It also approved of the Board’s requirement on motions to amend claims … Continue reading

PTAB grants motions to amend claims

In the Riverbed Tech., Inc. v. Silver Peak Sys., Inc. cases, the PTAB was presented with motions to amend the claims of the patents at issue. The PTAB, in granting the motions in part, discussed its rationale and provided guidance for future motions to amend. IPR2013-00402, Paper 35 (December 30, 2014); IPR2013-00403, Paper 33 (December 30, … Continue reading
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