by Tom Ritchie | Jul 31, 2020 | Amendment Practice, PTAB News
By Tom Ritchie – The PTAB may sua sponte raise unpatentability grounds based upon the prior art of record when reviewing a motion to amend. Nike, Inc. v. Adidas AG, 955 F.3d 45, 51 (Fed. Cir. 2020). It is now clear, however, that the PTAB will do so only in...
by Pablo Hendler | Apr 22, 2020 | Amendment Practice
By Pablo Hendler – In its April 9, 2020 decision in Nike Inc. v. Adidas AG, No. 19-1262, the Court of Appeals for the Federal Circuit made clear that the Board cannot reject substitute claims based on a sua sponte invalidity contention without first providing...
by Matthew Johnson | Feb 14, 2020 | Amendment Practice, Request for Reconsideration
By Levent Herguner and Matt Johnson – In a recent decision, the PTAB admitted that it erred in its prior determination of unpatentability, and authorized supplemental briefing on the patentability of substitute claims. See Rimfrost AS v. Aker Biomarine...
by David Maiorana | Jan 8, 2020 | Amendment Practice
By Robby Breetz and Dave Maiorana In Apple v. Uniloc 2017 LLC, [1] the patent owner moved to amend the claims contingent on an unpatentability finding by the Board. The contingent amendment cancelled the original claims and replaced them with a new claim set. The...
by Gasper LaRosa | Dec 18, 2019 | Amendment Practice, PTAB News
By Jen Bachorik and Gasper LaRosa – 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...
by Matthew Johnson | Dec 11, 2019 | Amendment Practice
By Sue Gerber and Matt Johnson On December 4, 2019, the PTAB hosted the last installment for 2019 in its “Boardside Chat” webinar series. The program, presented by Deputy Chief Judge Jacqueline Bonilla and Lead Administrative Patent Judge Jessica Kaiser, addressed...
