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Amended Claims In IPRs Must Clear Higher Hurdle Than Original Claims

Amended Claims In IPRs Must Clear Higher Hurdle Than Original Claims

by John Marlott | Feb 7, 2019 | Amendment Practice

By John Marlott An IPR of issued patent claims is statutorily limited to prior art challenges based on patents and printed publications under § 102 (novelty) or § 103 (obviousness).  The PTAB may not institute an IPR of existing patent claims on other unpatentability...
Motion to Amend Denied for Failure to Meet 42.121 Requirements

Motion to Amend Denied for Failure to Meet 42.121 Requirements

by Matthew Johnson | Dec 13, 2018 | Amendment Practice

By Levent Herguner and Matt Johnson –  On November 26, 2018, the PTAB entered its Final Written Decision in Intel Corp. v. Alacritech, Inc., Case IPR2017-01391, denying Patent Owner Alacritech, Inc.’s Motion to Amend in the inter partes review of certain claims...
PTAB Issues Fourth Installment Of Its Motion To Amend Study

PTAB Issues Fourth Installment Of Its Motion To Amend Study

by Matthew Johnson | Aug 14, 2018 | Amendment Practice, PTAB News

By: Matt Johnson On Monday, the PTAB issued its fourth installment of its ongoing motion to amend study, providing details on motions to amend filed and decided through March 31, 2018.  Patent owners have filed a motion to amend in 305 of the 3,203 completed trials...
Chief Judge Guidance: SAS Impact, Motions to Amend, and Claim Construction

Chief Judge Guidance: SAS Impact, Motions to Amend, and Claim Construction

by S. Christian Platt | Jun 8, 2018 | PTAB News

By: Jeffrey C. Wu, Ph.D. and S. Christian Platt On June 5, 2018, Chief Judge David Ruschke and Vice Chief Judge Tim Fink of the Patent Trial and Appeals Board (PTAB) participated in a webinar providing new guidance on three topics: (1) the new claim construction...
PTAB Provides Glimpse Of What Is Good Cause To Extend Trial

PTAB Provides Glimpse Of What Is Good Cause To Extend Trial

by S. Christian Platt | Oct 30, 2017 | Amendment Practice, PTAB News, Time Limits

By: Christian Platt and Richard Graham The PTAB may, where good cause exists, extend a trial up to six months beyond the required twelve month length pursuant to 35 U.S.C. §316(a)(11).  On October 5, 2017, the PTAB issued its first “good cause” extension of a trial in...
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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.