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Motion to Amend: Much to Admire?

Motion to Amend: Much to Admire?

by Matthew Johnson | Jul 26, 2023 | Amendment Practice, PTAB News, PTAB Trial Basics

By Alex Li and Matt Johnson – Motions to amend (MTA) are becoming a more frequently used tool for patent owners litigating before the Patent Trial and Appeal Board (PTAB).  When a patent is being challenged in an inter partes review (IPR) or post-grant reviews...
Takeaways From Motion to Amend Pilot Program Chat

Takeaways From Motion to Amend Pilot Program Chat

by John Marlott | Jul 18, 2023 | Amendment Practice, PTAB News

By John Wright and John Marlott – The USPTO hosted a “Boardside Chat” on June 15, 2023, to discuss the Motion to Amend Pilot Program, including the recent call for public input on the PTAB’s existing claim amendment procedures and potential rule changes.  The...
USPTO Requests Comments Regarding Motion to Amend Pilot

USPTO Requests Comments Regarding Motion to Amend Pilot

by John Marlott | Jun 23, 2023 | Amendment Practice, PTAB News

By John Wright and John Marlott – The USPTO continues to seek public feedback on PTAB procedures and potential rule changes.  In addition to soliciting comments on the many proposed rule changes announced on April 21, 2023, the USPTO also recently issued a...
PTAB Amendments May Address More Than Pending Unpatentability Grounds

PTAB Amendments May Address More Than Pending Unpatentability Grounds

by John Marlott | Jan 5, 2023 | Amendment Practice, PTAB News, PTAB Trial Basics

By Sachin Patel and John Marlott – The Federal Circuit has upheld the PTAB’s relatively liberal approach to proposed claim amendments in an IPR, holding that so long as a proposed substitute claim includes an amendment made in response to an...
Motion to Amend Pilot Program Extended (Again)

Motion to Amend Pilot Program Extended (Again)

by John Marlott | Oct 6, 2022 | Amendment Practice, PTAB News

By John Marlott – The United States Patent and Trademark Office (USPTO) has again extended the Motion to Amend (MTA) Pilot Program at the Patent Trial and Appeal Board (PTAB). The MTA Pilot Program provides a patent owner who files a motion to amend in a trial...
Fed. Circ. Affirms PTAB Decisions Over Microphone IP

Fed. Circ. Affirms PTAB Decisions Over Microphone IP

by Matthew Johnson | Aug 3, 2022 | Amendment Practice, PTAB News

By Lauren Kim,* Jen Bachorik, and Matt Johnson – On June 1, 2022, the U.S. Court of Appeals for the Federal Circuit (“CAFC”) affirmed the Patent Trial and Appeal Board’s (“PTAB”) decisions in ClearOne, Inc. v. Shure Acquisition Holdings, Inc. regarding...
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    The opinions expressed are those of the authors and do not necessarily reflect the views of Jones Day or its clients. The posts and information provided are for general information purposes and are not intended to be and should not be taken as legal advice.