Posts Tagged: "Nike v. Adidas"

Federal Circuit Vacates Board’s IPR Decision on Patentability of Substitute Claims

Finally, the Court held that the Board’s denial of Nike’s motion to amend for failure to show patentable distinction over “prior art not of record but known to the patent owner” was improper. The Court held that the Board’s finding that Nike’s “conclusory statement” was “factually inadequate” under its interpretation of the Idle Free decision was too rigid and was an improper ground to deny Nike’s motion. Accordingly the Court affirmed in part, vacated in part, and remanded the decision to the district court.

Nike v. Adidas: Federal Circuit refines PTAB motion to amend practice in inter partes review

The USPTO argued that at the heart of the requirement that substitute claims be patentable over prior art not of record but known to the patentee is nothing more than a requirement that the patent owner submit information necessary to satisfy the duty of candor owed to the Office. The Federal Circuit agreed, but noticed that there was no allegation that Nike had violated the duty of candor. Absent an allegation that there has been a violation of the duty of candor, the Federal Circuit ruled that it is improper to deny a motion to amend for failure to raise prior art not found in the granted petition.