PTAB’s Motion to Amend Pilot Program: Actual v. Proposed
By Catharina J. Chin Eng and Matt Johnson To facilitate claim amendments in inter partes, post-grant and covered business method patent reviews (collectively AIA trials), the USPTO on October 29, 2018, published a request for comment (“RFC”) on a proposed procedure...
read more
PTAB Makes Precedential Its Heightened Scrutiny Of Amended Claims In IPRs
By John Marlott 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 the patentability of...
read more
PTAB Initiates Motion to Amend Pilot
On October 29, 2018, the Office published a request for comments (“RFC”) on a proposed procedure for motions to amend filed in inter partes reviews, post-grant reviews, and covered business method patent reviews (collectively AIA trials) before the PTAB. The Office...
read more
PTAB Issues Updated Guidance on Motions to Amend in AIA Trials
By Jonathan Knight, Ph.D. and Carl Kukkonen On March 7, 2019, the PTAB issued a new precedential order that helps to clarify a petitioner’s briefing rights in view of a recent update to the AIA Trial Practice Guide. The new order is Lectrosonics, Inc. v. Zaxcom, Inc.,...
read more
District Court Extends IPR Estoppel To Non-Petitioned Invalidity Grounds
By Mike Lavine and Matt Johnson Presidio Components, Inc. (“Presidio”) petitioned for inter partes review (IPR) of U.S. Patent No. 6,144,547 (the “‘547 Patent”), which American Technical Ceramics Corp. and AVX Corporation (together “plaintiffs”) asserted against...
read more