Fact or Fiction: Can Patent Owners Really Amend Claims in Post-grant Review Proceedings?

(277 Ratings)

Produced on: October 25, 2016

Course Format On Demand Audio

Taught by


Course Description

Time 61 minutes
Difficulty Intermediate

Post-Grant Proceedings are only a few years old. The Patent Trials and Appeals Board and courts are still grappling with how to resolve patent validity disputes quickly and equitably. In this course, attorneys Stephen Lieb and Bryan Braunel discuss one major point of difficulty: whether a patent owner can amend claims in an IPR, PGR, or CBM proceeding. Here, they outline the requirements for amending a claim, the potential grounds for denial, and address recent PTAB and Federal Circuit decisions. In addition, they provide a bit of insight for the opposing view, touching on best practices for opposing a Motion to Amend. Overall, Mr. Lieb and Mr. Braunel assist the practitioner in understanding the when, where, and how of amending claims in these proceedings.

Learning Objectives:

  1. Understand when a claim can be amended in a Post-Grant Proceeding
  2. Recognize potential grounds for denial of a motion to amend
  3. Analyze recent decisions, including Nike, Idle Free Systems, and Riverbed Technologies, among others
  4. Identify best practices for opposing a Motion to Amend


Bryan Braunel

Frommer Lawrence & Haug LLP

During his years practicing IP law at Frommer Lawrence & Haug, Bryan Braunel has developed an expertise in Hatch-Waxman litigation, while representing both generic and brand-name companies. Mr. Braunel possesses extensive experience in fact and expert discovery, and trial preparation. While his primary focus has been on litigation, Mr. Braunel has also assisted in prosecuting patents in multiple technological areas such as copy machines and image data processing algorithms used in medical procedures. 

Stephen Lieb

Frommer Lawrence & Haug LLP

Stephen J. Lieb is a partner in the New York office of Frommer Lawrence & Haug LLP. Mr. Lieb's practice focuses on patent litigation, post-grant proceedings before the PTAB, and strategic patent prosecution. He provides his clients with a full complement of intellectual property services to protect and assert their intellectual property and to defend against charges of infringement. His experience spans a range of technologies including consumer products, electronic data systems, semiconductor processing equipment and fabrication techniques, pharmaceuticals, and gene amplification. He has represented a variety of clients from major players in electronics, pharmaceuticals, and biotechnology to small companies and individuals. He also provides client counseling for clients in the electronics, computer systems, financial services, digital communications, and data encryption fields with an eye toward developing a cohesive portfolio of rights.


Jundong M.

I like this course.

James B.

Great Course!

Richard D.

The presenters did an excellent job. The powerpoint was very detailed and filled with useful information.

Robert N.

interesting info

Jessica B.

Useful coverage of the topic

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$ 59 Intellectual Property Law and Patent Law In Stock


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