Patent Owners Have a High Burden to Amend Claims

Authored by Michelle Carniaux and Michael E. Sander

In a previous post, we discussed several requirements for a Patent Owner to succeed in a Motion to Amend Claims. Six months later, the Patent Trial Appeal Board (“the Board”) has ruled on two such motions, denying both, and has given some additional guidance to Patent Owners on how to draft a successful Motion to Amend.

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Motions to Amend and Substitute Claims in an Inter Partes Review

Authored by Michelle Carniaux and Michael E. Sander

After the Patent Trial and Appeal Board (“the Board”) institutes a trial for inter partes review, the patent owner has an opportunity to amend/substitute the challenged claims through a motion to amend. The Board recently issued a decision on a motion to amend that appears to be intended to provide guidance on how the Board will analyze such motions, and the general requirements of such motions. See IPR2012-00027, No. 26 (P.T.A.B. June 11, 2013).

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