Authored by Brian S. Mudge

In the brief history of AIA trials, the Board has granted only a handful of motions to amend — six at the time of the Supreme Court oral argument in Cuozzo. A recent decision by the Board has upped that number by one. The case, Google v. ContentGuard Holdings1, involved a motion to amend which also requested the Board’s opinion that the amended claim was substantially identical to the originally issued claim.

Key Takeaway: A patent owner who successfully amends a claim in an AIA trial can gain further advantage by also requesting a determination that the new claim is substantially identical to the original claim. With a new claim declared not only patentable but also of the same scope as the original claim, a patent owner can defeat arguments regarding intervening rights as to the amended claim.

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Patent Trial Program Emerges Intact From Supreme Court Row

Authored Brian S. Mudge

In its first decision addressing the post-grant patent trial program recently established by Congress, the Supreme Court in Cuozzo1 has given a resounding victory to the U.S. Patent & Trademark Office. Rejecting a challenge to the PTO’s handling of these new proceedings, the ruling confirms that the Office has broad powers to determine how the cases will be tried and the standards used to govern them. As a result, patent owners will continue to face a difficult path before the PTO in defending challenges to patent validity — one that, to date, has proven to be significantly more hazardous than the courts to patentees.

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