Among other topics, a recent web conference (click here to access the full recording) hosted by George Quillin and Jeff Costakos tackled the latest developments in amendment practice before the PTAB.
The conference addressed the very recent Federal Circuit decision in Microsoft v. Proxyconn, in which the court affirmed the PTAB’s restrictive amendment practice. Patentees hoping for relief from the Federal Circuit in relation to the heavy burden that must be satisfied to make an amendment during PTAB proceedings were disappointed in this outcome.
However, some limited relief was provided by the PTAB itself in the Masterimage decision, which clarified the scope of prior art over which a proposed amendment must be shown to be patentable in order to be allowed by the PTAB. This decision clarified that patent owners need not show patentability all prior art in the universe, but only that known to the patentee.