American Intellectual Property Law Association - Recent Guidance Issued by the Patent Trial and Appeal Board on Motions to Amend and Remand Procedures

Jonathan Bowser, Counsel in the firm's Intellectual Property section, gave a presentation to members of the American Intellectual Property Law Association (AIPLA) on recent guidance issued by the Patent Trial and Appeal Board (PTAB) on motions to amend and remand procedures. Jonathan explained the expected effect of the PTAB’s guidance on inter partes review (IPR) trials challenging the validity of issued patents. The PTAB’s guidance on motions to amend was issued in response to the Federal Circuit’s en banc decision in Aqua Products, Inc. v. Matal, where the Federal Circuit struck down the PTAB’s practice of requiring patent owners to have the burden of persuasion to prove the patentability of proposed substitute claims. The PTAB’s guidance on remand procedures provides notice to practitioners how the PTAB will handle IPR cases that are vacated and remanded on appeal by the Federal Circuit.