VERITAS TECHNOLOGIES LLC v. VEEAM SOFTWARE CORPORATION (Fed. Cir. 2016) (P) – A distinguishing combination of newly added features is generally sufficient for an IPR motion to amend

by Steve Driskill | Aug 30, 2016 | [sub] inter partes review, PTO Procedure

A showing that the combination of newly added features in substitute claims for inter partes review distinguishes over the prior art is generally sufficient to satisfy the requirements of a motion to amend without addressing whether each newly added feature was...

IN RE MAGNUM OIL TOOLS INTERNATIONAL (Fed. Cir. 2016) (P) – The burden of proof does not automatically shift to the patent owner as soon as the PTO institutes an IPR

by Steve Driskill | Jul 25, 2016 | [sub] inter partes review, PTO Procedure

The burden of proof does not automatically shift between the petitioner and the patent owner as soon as the PTO institutes an inter partes review. Here, for example, the petitioner’s failure to specifically address a motivation to combine the two prior art references...

CUOZZO SPEED TECHNOLOGIES, LLC V. LEE (S. Ct. 2016) (P) – The decision to institute IPR is non-appealable and the broadest reasonable interpretation is acceptable

by Steve Driskill | Jun 20, 2016 | [sub] inter partes review, PTO Procedure

The PTO’s decision to institute an inter partes review is generally non-appealable, at least “where the grounds for attacking the decision to institute inter partes review consist of questions that are closely tied to the application and interpretation of statutes...

SAS INSTITUTE, INC. v. COMPLEMENTSOFT, LLC. (Fed. Cir. 2016) (P) – Claim construction cannot be changed in an IPR final decision without an opportunity to respond

by Steve Driskill | Jun 10, 2016 | [sub] inter partes review, PTO Procedure

The PTO may not change its claim construction in the final written decision of an inter partes review without giving both of the parties an opportunity to respond. Here, for example, the Board’s assertion that its change in claim construction was non-prejudicial...

IN RE AQUA PRODUCTS, INC. (Fed. Cir. 2016) (P) – The PTO need not evaluate unargued limitations in a motion to amend during inter partes review

by Steve Driskill | May 25, 2016 | [sub] inter partes review, PTO Procedure

The PTO need not evaluate unargued limitations in a motion to amend during inter partes review. Here, for example, the PTO’s failure to evaluate objective indicia of non-obviousness and various new limitations in certain proposed claims was found to be proper because...

INTELLIGENT BIO-SYSTEMS, INC. v. ILLUMINA CAMBRIDGE LTD. (Fed. Cir. 2016) (P) – An IPR reply brief can be ignored in its entirety if any portion thereof includes new arguments

by Steve Driskill | May 9, 2016 | [sub] inter partes review, PTO Procedure

A reply brief submitted during inter partes review proceedings can be ignored in its entirety if any portion thereof includes new arguments raised for the first time. Here, for example, a reply brief including arguments not in response to those raised in the...