Category Archives: Amendments before the PTAB

USPTO Responds To Criticism By Promising PTAB Rule Changes That Should Benefit Patent Owners

By Tom Engellenner Newly appointed USPTO Director Michelle Lee has responded to public criticism of the post-grant patent review mechanisms provided by the America Invents Act (AIA) by announcing in her blog last week that the government will implement several rule … Continue reading

Posted in Amendments before the PTAB, America Invents Act, Covered Business Methods, Inter Partes Review, Post Grant Review, PTAB Procedure, Trial Tactics | Tagged , , , , , , , , , , , , , ,

Does the Broadest Reasonable Interpretation Standard Make Sense?

By Tom Engellenner Two of the earliest challenges to patents under the new post grant proceedings established by the America Invents Act (AIA) are now on appeal to the Court of the Appeals for the Federal Circuit and both appeals … Continue reading

Posted in Amendments before the PTAB, America Invents Act, Anticipation/Obvious, Appeals, Court of Appeals Fed Circuit, Covered Business Methods, District Court, Federal Circuit, Inter Partes Review, Post Grant Review, PTAB Procedure, Reexamination, Trial Tactics, USPTO | Tagged , , , , , , , , , , , , , , , , ,

PTAB Grants a Patent Owner’s Request to Amend

By Reza Mollaaghababa and Anthony Pisano In an Inter Partes review (IPR) proceeding before the PTAB, a patent owner is not automatically afforded the right to amend the challenged claims. Rather, the patent owner has a burden of establishing that … Continue reading

Posted in Amendments before the PTAB, America Invents Act, Anticipation/Obvious, Covered Business Methods, Inter Partes Review, Post Grant Review, PTAB Procedure, Trial Tactics, USPTO | Tagged , , , , , , , , , , ,

The PTAB’s Denial of Patent Owner’s Motion to Amend Underscores the Obstacles that Patent Owners Face In Amending Challenged Claims

By Reza Mollaaghababa As we had reported earlier, a patent owner has a heavy burden in amending claims in an inter partes review (IPR) proceeding.  The recent case of Nichia Corp. v. Emcore Corp. (IPR2012-00005) provides an example of obstacles … Continue reading

Posted in Amendments before the PTAB, America Invents Act, Anticipation/Obvious, Covered Business Methods, Inter Partes Review, Post Grant Review, PTAB Procedure | Tagged , , , , , , , , , , , ,