Topic: Motions to amend

Federal Circuit Rejects PTAB’s Analysis of Motion to Amend

By James Crawford (US) on November 16, 2016 Posted in Federal Circuit, Motions 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

By Andrew Liddell (US) and Talbot Hansum (US) on April 28, 2016 Posted in Claim construction, Discovery, Experts, Institution decisions, Motions to amend

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

By on April 13, 2016 Posted in Federal Circuit, Motions to amend

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

PTAB offers Patent Owners a “sense of comfort” in making motions to amend

By on September 4, 2015 Posted in Motions to amend

Much discussion has followed the PTAB’s June 11, 2013 opinion in Idle Free Systems, Inc. v. Bergstrom, Inc., IPR2012-00027, Paper 26. The main controversy has been the language included in the opinion stating that in motions to amend, the burden is on the Patent Owner to show a “patentable distinction over the prior art of … Continue reading

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

By on July 24, 2015 Posted in Claim construction, Federal Circuit, Motions to amend

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

By on February 5, 2015 Posted in Motions to amend

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