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PTAB / Claim Amendments / Federal Circuit / PTAB Procedures and Rules

En banc Federal Circuit to review standards for amending claims in PTAB proceedings

On August 12, 2016, the Federal Circuit granted the petition for rehearing filed in In re Aqua Products Inc. and decided that its full panel of judges will consider the PTAB’s current practice for allowing (or, in most cases, not allowing) claim amendments. Amendments in PTAB proceedings are currently guided by the Informative Opinion issued in Idle Free Systems, Inc. v. Bergstrom, […]

Obviousness at the PTAB: Use common sense with care.

On August 10, 2016, in Arendi v. Apple et al., the Federal Circuit reversed a final written decision in which the PTAB held that claims were unpatentable as obvious, finding that the PTAB had improperly relied on common sense to fill a gap in the primary prior art reference. The court acknowledged that, post-KSR, common […]

Put it all in the Petition, and with particularity. PTAB authority is limited to unpatentability theories spelled out with specificity in the petition.

On July 25, 2016, the Federal Circuit reversed a PTAB finding of unpatentability because the decision was based on unpatentability theories never presented by the petitioner and that were not supported by the record. In re: Magnum Oil Tools Int’l, No. 2015-1300 (Fed. Cir. July 25, 2016). The proceeding began when McClinton Energy Group filed […]

Motions to Amend – The Federal Circuit discusses the Who (has the Burden), What (Prior Art needs to be distinguished), and How (does the PTAB need to address secondary considerations)

In Nike, Inc. v. Adidas AG, decided February 11, 2016, the Federal Circuit clarified the requirements for proposing substitute claims in IPR proceedings. In the IPR proceeding subject to the appeal, the PTAB granted Nike’s motion to cancel claims 1-46, but denied its motion to substitute claims 47-50 finding that Nike failed to establish patentabilty […]

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