by Matthew Johnson | Mar 28, 2021 | Amendment Practice
By Sarah Brickey and Matt Johnson – The precedential ruling in Hunting Titan, Inc. v. DynaEnergetics Europe GmbH, IPR2018-00600, Paper 67 (PTAB July 6, 2020) allows the Patent Trial and Appeals Board (PTAB) to raise an issue regarding substitute claims that was...
by Josh Nightingale | Mar 8, 2021 | Amendment Practice
By Grant Hebrank* and Josh Nightingale – The Patent Trial and Appeal Board (“PTAB”) of the United States Patent and Trademark Office (“USPTO”) issued a final rule regarding the allocation of the burden of persuasion for the patentability of substitute claims on...
by Matthew Johnson | Feb 12, 2021 | Amendment Practice, Trial Institution
By Andrea Beathard and Matt Johnson – On January 28, 2021, the PTAB held a Boardside Chat webinar at which three PTAB judges discussed four recent developments related to America Invents Act (“AIA”) trials. First, Vice Chief Judge Michael Tierney discussed what...
by S. Christian Platt | Dec 20, 2020 | Amendment Practice
By Megan McKnelly* and S. Christian Platt – On December 3, 2020, the Patent Trial and Appeal Board (“PTAB”) released data regarding the usage and success rates of its Motion to Amend (“MTA”) Pilot Program (“Pilot”). All PTAB cases instituted on or after March...
by Matthew Johnson | Aug 21, 2020 | Amendment Practice
The Patent Trial and Appeal Board (PTAB) has published the sixth installment of its Motion to Amend Study. The study tracks and analyzes all motions to amend filed in America Invents Act trials, including pilot motions, through the end of March 2020. This installment...
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...
