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ARTICLE · 18 JUNE 2018

Does The PTAB's Western Digital Order Move The Needle?

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This past week the USPTO designated a new informative order (here) providing guidance on motions to amend.

United StatesIntellectual Property
Oblon, McClelland, Maier & Neustadt, L.L.P
Oblon, McClelland, Maier & Neustadt, L.L.P
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      This past week the USPTO designated a new informative order (here) providing guidance on motions to amend.  In Western Digital Corporation v. Spex Technologies, IPR2018-00082, -00084, paper 13, the PTAB confirms that amendment practice at the PTAB post Aqua Products is similar to the prior practice in inter partes reexamination ("IPX") with one major exception – by statute (35 U.S.C. § 316(d)), in a motion to amend, a patent owner in an inter partes review ("IPR") may only propose a reasonable number of substitute claims.  In contrast, in IPX, patent owners were unfettered in their ability to present new claims of narrowed or clarified scope. 

      What constitutes a reasonable number of substitute claims?  The PTAB explains in Western Digital that, to the extent a patent owner seeks to propose more than one substitute claim for each cancelled claim, the patent owner should explain in a motion to amend the need for the additional claims and why the number of

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