Federal Circuit Rules That The PTAB Cannot Adopt A New Claim Construction In A Final Written Decision Without Giving The Parties An Opportunity To Address That New Construction: SAS Institute Inc., v. ComplementSoft, LLC
The PTAB sometimes changes its claim constructions during the course of an inter partes review or a covered business method review. When it does so, according to the Federal Circuit’s recent holding in SAS Institute Inc. v. ComplementSoft, LLC, __ F. 3d __ (Fed. Cir....
Pending Patent Trial and Appeal Board’s (PTAB) Final Written Decision Does Not Require Stay and Does Not Justify Rule 60 Relief: WesternGeco LLC v. ION Geophysical Corp.
On May 4, 2016 Magistrate Judge Dena Hanovice Palermo denied ION Geophysical Corp.’s motion for stay and recommended that the District Court deny ION’s request for relief under Rule 60(b)(6) after the Patent Trial and Appeal Board found certain of the claims...
PTAB Identifies Five New Decisions as Precedential
On May 10th, the PTAB identified five trial decisions as precedential, bringing the total number of IPR/CBM precedential decisions to eight. The newly added decisions are well known decisions that active PTAB practitioners will recognize and have likely already been...
Motion To Amend: Shinn Fu Company of America, Inc., et al. vs. The Tire Hanger Corporation (IPR2015-00208)
On April 22, 2016, the PTAB granted a motion to amend for only the sixth time since institution of the AIA in its decision of Shinn Fu Company of America, Inc., et al. vs. The Time Hanger Corporation (IPR2015-00208, Paper 24). The patent at issue relates to “a method...
Getting the Last Word in the Argument – Sur-replies at the PTAB: LG Electronics v. ATI Technologies.
Typically briefing in a PTAB proceeding runs the following course: Petition; Patent Owner Preliminary; Response; Patent Owner Response; and Petitioner Reply. This is the pattern where no amendments are presented by the Patent Owner. When a motion to amend is...