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 Board applied the broadest reasonable interpretation standard of claim interpretation and invalidated the challenged claims as obvious over prior art. The Board also denied Patent Owner’s motion to amend, concluding only that Patent Owner and its expert declarant had failed to address whether … 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 or trial before the Office. A revised Trial Practice Guide is forthcoming.

The published final rule describing the amended rules is available here. A redline comparing the amended rules to the old rules is available here.

We detail the major … 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, the court clarified that for known prior art not of record in the IPR, the Patent Owner needs only to submit a simple statement of patentability if the Patent Owner’s duty of good faith and candor to the PTO is not at issue.… Continue Reading

PTAB offers Patent Owners a “sense of comfort” in making 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 record and also prior art known to the patent owner” (emphasis added). In the flurry of discussion and debate that has followed, the focus has been on what prior art is “known to the patent owner.” How much prior art does that … 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 that the Patent Owner must demonstrate that its substitute claims are patentable over the prior art of record.

The Federal Circuit stated that Patent Owner Proxycon’s argument that the BRI standard should not apply in IPRs was foreclosed by its decision in In 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, 2014).

To win on a motion to amend, the movant must demonstrate the following:

  1. that the proposed substitute claims are patentable over the prior art of record and any prior art not of record but known to the patent owner;
  2. that the
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