Law360, New York (February 11, 2016, 11:11 PM ET) — A Federal Circuit decision on Thursday ordering the Patent Trial and Appeal Board to reconsider its denial of Nike’s motion to amend its patent in America Invents Act review is a first for the court and provides guidance for patent owners on how to appeal such denials.
Since AIA reviews began, the PTAB has granted few motions to amend patents, leading many patent owners to argue that the board has effectively eliminated an important way for them to help their patents survive an invalidity challenge.
The Federal Circuit’s decision to vacate the PTAB’s denial of Nike Inc.’s motion and remand does not mean the footwear giant will definitely get to amend its patent. However, every previous decision by the appeals court on amendments had affirmed the board’s denial, so Thursday’s ruling can give patent owners a glimmer of hope and some helpful strategies to use in future appeals, said Gregory DeLassus of Harness Dickey & Pierce PLC.
“There had been zero successful efforts on appeal to reverse that long list of denials, and this is as close as anyone has come, so it’s therefore pretty interesting,” DeLassus said, adding the decision provides “the beginning of a roadmap” for patent owners who want to appeal after their motions to amend are denied.