Log in or register
Share on LinkedInShare on LinkedIn

ARTICLE · 18 JUNE 2018

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

Oblon
Explore more from Oblon

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
Author LinkedIn connections

      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

We operate a free-to-view policy, asking only that you register in order to read all of our content. Please login or register to view the rest of this article.

Register for freeORLog in

View source

Related Articles

Legal Intelligence Newsletters: sign up for the latest legal and regulatory news on your chosen topics

Read more about

Related Comparative Guides

See more popular content from

Article

UMG v. DistroKid: When AI Becomes A Consumer Protection Issue

Universal Music Group's lawsuit against DistroKid raises a critical question about AI disclosure in consumer markets: when does the use of artificial intelligence become material information that must be disclosed to consumers? The case centers on allegations that DistroKid distributed mass-generated AI music while creating the impression it was created by legitimate human artists, potentially violating existing consumer protection laws even without specific AI disclosure requirements.
United StatesIntellectual Property
Frankfurt Kurnit Klein & Selz PC
Frankfurt Kurnit Klein & Selz PC
Article

PTAB/USPTO Update - October 2026

The USPTO has released new templates and guidance for AIA trial proceedings, announced key appointments including a Chief AI Officer, and published updated procedures for patent applications and subject matter eligibility declarations. Director Squires delivered multiple addresses emphasizing the constitutional importance of intellectual property rights while the agency expanded its community engagement efforts and international collaboration through WIPO's Global IP Assignment Platform pilot program.
United StatesIntellectual Property
WilmerHale
WilmerHale
Article

The Trademark Scam Field Guide: Look-Alike Filing Sites, Fake USPTO Notices, And How To Get Out If You’ve Been Caught

A business decides to file a trademark. Someone on the team searches for a familiar online legal-services brand, clicks the first result, and lands on a site with a similar-sounding name, a polished design, five-star reviews, and a low flat fee. The application gets filed. Months later the business learns the “service” was not who they thought it was, the filing was signed by someone with no authority to sign it, and the USPTO has suspended the application along with hundreds or thousands of others from the same shop.
United StatesIntellectual Property
Harness IP
Harness IP
Article

U.S. Government Backs Fair Use For AI Training In OpenAI Copyright Litigation

The U.S. government has filed a Statement of Interest of the United States of America under 28 U.S.C. § 517 in the Southern District of New York multidistrict litigation over OpenAI’s use of copyrighted works to train large language models. The filing appears to be the federal government’s first direct intervention in the wave of artificial intelligence (AI) training copyright cases, and it advises the court to treat model training (separate from use of AI to generate outputs) on copyrighted text standing alone as a highly transformative fair use under current law.
United StatesIntellectual Property
Lowenstein Sandler LLP
Lowenstein Sandler LLP
Article

Director Discretionary Decision Denies Institution In IPR Based On A Foreign Government Being An RPI Of The Petitioner

A precedential Director decision bars foreign governments from participating as petitioners or real parties in interest in AIA proceedings, denying institution in an IPR case where evidence suggested Chinese government ownership through AVIC. The ruling establishes that foreign governments, like U.S. federal agencies under Return Mail, are not "persons" eligible to challenge patents before the USPTO, preventing potential national security risks and asymmetric patent challenges.
United StatesIntellectual Property
Oblon
Oblon
Article

Federal Circuit Affirms Patent Invalidity Where Inventorship Error Cannot Be Corrected Under 35 U.S.C. §256

The Federal Circuit has ruled that patents cannot be saved when an undisputed joint inventor is omitted and cannot be added due to inability to provide required notice. This case of first impression establishes that omitted coinventors are "parties concerned" under 35 U.S.C. § 256(b), entitled to notice regardless of economic interest, and that failure to satisfy this statutory requirement results in patent invalidity even when all parties agree on inventorship.
United StatesIntellectual Property
Oblon
Oblon
Article

European Patent Office Updates Its Guidelines For Examination

The European Patent Office has released its April 2026 Guidelines for Examination, introducing significant changes to procedural and substantive patent law. Key updates include modifications to the PACE acceleration program, new claim interpretation standards following the G1/24 decision, relaxed novelty requirements for products placed on the market under G1/23, and refined guidance on further medical use claims under Article 54(5) EPC.
GlobalIntellectual Property
Oblon
Oblon
Article

USPTO Plans For AI Implementation

While this blog normally writes about the issues facing the patentability of AI inventions, we want to write about a topic that is high on our radar: the USPTO’s plans for integrating AI into the examination process. While certain programs, such as the USPTO’s Artificial Intelligence Search Automated Pilot Program (ASAP!) program were previously tested, a greater question looms on the availability of examiners to use large language models (LLMs) as a tool for examination.
United StatesIntellectual Property
Oblon
Oblon