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Proposed Claims Allowed Despite Including Amendments Not Responsive To Unpatentability Ground - Patent

In American National Manufacturing Inc. v. Sleep Number Corporation, the Federal Circuit held that so long as a proposed claim amendment does not enlarge the scope of the claims. ....

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USPTO Extends Motion To Amend Pilot Program - Patent

On October 4, 2022, the United States Patent and Trademark Office (USPTO) announced that it would be extending the Motion to Amend (MTA) Pilot Program at the Patent Trial and Appeal Board (PTAB). ....

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USPTO Extends Motion to Amend Pilot Program | Rothwell, Figg, Ernst & Manbeck, P.C.

On October 4, 2022, the United States Patent and Trademark Office (USPTO) announced that it would be extending the Motion to Amend (MTA) Pilot Program at the Patent Trial and Appeal. ....

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No Unpatentability in a Successful Motion to Amend

No Unpatentability in a Successful Motion to Amend
Tuesday, February 23, 2021
Mylan Labs. Ltd. v. Aventis Pharma S.A., IPR2016-00712, Paper 112 (P.T.A.B. Oct. 22, 2019),
aff’d without opinion (Fed. Cir. Jan. 15, 2021), the Patent Trial and Appeal Board (“PTAB”) granted Patent Owner’s motion to amend, finding that Petitioner had not shown the proposed substitute claims to be unpatentable.
Background
The drug at issue was JEVTANA
® (cabazitaxel), which is indicated for use in combination with prednisone for the treatment of patients with metastatic castration-resistant prostate cancer. Mylan challenged claims 1-5 and 7-30 of Orange Book-listed U.S. Pat. No. 8,927,592 (“the ’592 patent”) as unpatentable under 35 U.S.C. § 103(a). The ’592 patent, along with two continuation patents that issued from it, moved the patent expiration date for JEVTANA ....

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