More PTAB Guidance on Motions to Amend

Author: Anthony A. Hartmann
Editor: Maureen D. Queler

The Patent Trial and Appeal Board expanded its listing of representative decisions on motions to amend to include an Order from Corning Optical Comm. RF, LLC v. PPC Broadband, Inc., IPR2014-00441. Paper 19 (Oct. 30, 2014). In that Order, the PTAB provided the Patent Owner with guidance regarding the requirements for a motion to amend. Corning Optical repeats and to an extent clarifies the guidance found in the Trial Practice Guide and earlier-identified representative decisions on motions to amend.

For example, Corning Optical addressed the requirement to show changes made by the proposed amendment. While no particular form is required, Corning Optical advised the use of brackets and underlining, which is consistent with amendment practice in ex parte and inter partes reexaminations and reissue proceedings. See 37 C.F.R. §§ 1.173 & 1.530.

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First CBM Claims Survive Review, First Contested Motions to Amend Granted-in-Part

Author: Jonathan R.K. Stroud
Editor: Aaron L. Parker

December was a big month—and an interesting way to end 2014—at the PTAB. As our updated statistics show, claims have finally survived CBM review, and the Board has granted-in-part the first set of contested Motions to Amend. See Riverbed Tech., Inc. v. Silver Peak Sys., Inc., IPRs2013-00402, -00403, Paper 33 (Dec. 30, 2014).

PTAB-STATS--IPR_Substitute_Claim-1.16.15

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The Board Grants First Opposed  Motions to Amend in Two IPR Trials (Part II): When Throwing Stones at Birds, Board Prefers Seeing One Bird Hit with Two Stones

Author: Megan Leinen Johns
Editor: Anthony A. Hartmann

When throwing stones at birds, the Riverbed decisions highlight that Patent Owners and the Board may have different views on which bird got hit by which stone. The Patent Owner saw two stones hitting two birds, but the Board saw two stones hitting one bird. It is time to put on the Board’s substitute goggles.

One might reasonably expect that if a substitute independent claim is patentable over the art, then any dependent claim would be similarly patentable. Idle Free, however, outlines three scenarios, noting when the patent owner should show a claim is patentably distinct over other proposed substitute claims, i.e., treating them as prior art. In the Board’s view, proposed claims may amount to more than one permissible substitute claim for each challenged claim. See also 37 CFR § 42.121(a)(3).

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