IP Litigation Attorney in Washington, District of Columbia

Motions to Amend in AIA Trials

Washington, D.C. intellectual property lawyer Matt Phillips shares his thoughts about motions to amend in AIA trials.

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00:04
so motions to amend usually do not make
00:07
sense in most aia trials and that’s
00:10
primarily because of intermediate rights
00:12
that is the fact that
00:14
with an amendment to the claims you lose
00:17
the right to recover damages for past
00:19
infringement the other reason that
00:21
motions to amend usually are not thought
00:24
of
00:25
favorably is that
00:27
if there’s a pending continuation in the
00:29
patent family it’s better to go get the
00:31
claims you want tweak the language etc
00:35
in those pending continuations in fact
00:37
you can even file a reissue application
00:40
during or after an aia trial to do the
00:43
same thing
00:44
now the one exception that i will note
00:46
is sometimes when there’s co-pending
00:48
litigation it makes sense to pursue a
00:51
motion to amend that explicitly
00:53
incorporates your claim construction
00:56
positions into the patent claim language
00:59
and so that’s always something to
01:00
consider
01:02
and the last point i’ll mention is that
01:03
if you do file a motion to amend an aia
01:06
trial these days you should definitely
01:09
take advantage of the patent or the
01:11
pilot programs for such
01:13
they are meant to
01:15
tip the balance in the favor of patent
01:17
owners and they certainly do it would be
01:20
very uncommon not to take advantage of
01:22
those these days

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