Amending Patents in PTAB Proceedings: Implications of Aqua Products
Navigating the Evolving Post-Grant Landscape, Considerations for Motions to Amend Proposing Substitute Claims
Recording of a 90-minute premium CLE webinar with Q&A
This CLE course will provide guidance to patent counsel on the changes prompted by the Federal Circuit’s decision in Aqua Products. The panel will discuss what practitioners—whether representing patent owners as petitioners or patent owners defending challenged claims—should consider relating to motions to amend proposing substitute claims.
Outline
- Aqua Products holdings, including all decisions rendered by a fractured en banc court
- Federal Circuit and PTAB case law affected
- Impact of granted substitute claim(s) on co-existing, pending litigation/USPTO proceedings
- Intervening rights arising from granted substitute claims?
- Consider prosecution options
- Consider including several claims with varying claim scope to minimize necessity of amendment
- Keep continuation application pending
- What will be important to watch for in days ahead?
- USPTO efforts at proposed rule-making possibly explicitly placing the burden on the patent owner to show patentability of proposed substitute claim(s)
- Status of Chevron deference in light of pending U.S. Supreme Court treatment in SAS Institute Inc. v. Matal (cert. granted May 22, 2017)
- Constitutionality of AIA post-grant proceedings in light of pending Oil States Energy Services LLC v. Greene’s Energy Group LLC (cert. granted June 12, 2017) and developments in sovereign immunity cases
- Application of Aqua Products in PTAB
Benefits
The panel will review these and other key issues:
- How could the Aqua Products decision affect patent owners’ ability get to amended claims granted?
- What practical considerations should counsel keep in mind related to motions to amend?
- What impact will this decision have on USPTO efforts at proposed rule-making possibly explicitly placing the burden on the patent owner to show patentability of proposed substitute claims?
Faculty
Thomas L. Irving
Partner
Finnegan Henderson Farabow Garrett & Dunner
Mr. Irving has 35 years of experience in the field of IP law. His practice includes due diligence, patent prosecution,... | Read More
Mr. Irving has 35 years of experience in the field of IP law. His practice includes due diligence, patent prosecution, reissue and reexamination, patent interferences, and counseling, including prelitigation, Orange Book listings of patents covering FDA-approved drugs, and infringement and validity analysis in the chemical fields, as well as litigation. Mr. Irving has served as lead counsel in many patent interferences.
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Barbara Clarke McCurdy
Partner
Finnegan Henderson Farabow Garrett & Dunner
Ms. McCurdy has more than 25 years of experience creating, enforcing, and defending patent rights, with a particular... | Read More
Ms. McCurdy has more than 25 years of experience creating, enforcing, and defending patent rights, with a particular focus on patent litigation, patent counseling, and contested patent proceedings before the U.S. Patent and Trademark Office (USPTO). She has been lead trial counsel in patent cases in the U.S. district courts, appeals before the Federal Circuit, Section 337 investigations at the U.S. International Trade Commission, and contested proceedings at the USPTO.
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J. Derek McCorquindale
Partner
Finnegan Henderson Farabow Garrett & Dunner
Mr. McCorquindale focuses his practice on patent and other intellectual property litigation, at both the trial and... | Read More
Mr. McCorquindale focuses his practice on patent and other intellectual property litigation, at both the trial and appellate levels. He has experience in cases before federal district courts, the International Trade Commission (ITC), the Patent Trial and Appeal Board (PTAB), and the Federal Circuit, where he has contributed to numerous successful appeals and served as lead counsel.
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