As part of the post-grant proceedings created in 2012 by the America Invents Act, a Patent Owner can choose to file a motion to amend its patent when that patent is challenged. See 35 U.S.C. § 316(d) (“Amendment of the patent.”); 37 CFR § 42.121 (“Amendment of the patent.”). For example, a Patent Owner may
On December 4, 2020, the Board designated three cases from October as precedential. Together, the rulings help understand the Board’s approach to both serial challenges to issued patents and application of 35 U.S.C. § 315’s limitations on proceedings. Two of the newly precedential decisions address the real party in interest (“RPI”) requirement and the third concerns follow-on petitions and joinder motions. See RPX Corp. v. Applications in Internet Time, LLC, IPR2015-01750, Paper 128 (P.T.A.B. Oct. 2, 2020) (“RPX”); Apple Inc. v. Uniloc 2017 LLC, IPR2020-00854, Paper 9 (P.T.A.B. Oct. 28, 2020) (“Apple v. Uniloc”); SharkNinja Operating LLC v. iRobot Corp., IPR2020-00734, Paper 11 (P.T.A.B. Oct. 6, 2020) (“SharkNinja”).Read more about these decisions below.
Continue Reading PTAB designates three precedential cases on Section 315’s time-bar and estoppel provisions
On August 20, 2019, a panel at the PTAB issued a Final Written Decision in Hunting Titan, Inc., v. DynaEnergetics GmbH & Co. KG that denied DynaEnergetics’s contingent motion to amend claims under the Motion to Amend Practice. IPR2018-00600, Paper 42 at 29. The Panel explained that Hunting Titan met its burden to…