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ARTICLE · 13 AUGUST 2015

Mission (Nearly) Impossible: Motion To Amend Claims

Duane Morris LLP
Duane Morris LLP
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With the Patent Trial and Appeal Board recently granting a patent owner's motion to amend claims for just the third time in its nearly three-year history, it seems like a good time to review the high bar the Board has set for such motions.

United StatesIntellectual Property
Duane Morris
Duane Morris
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With the Patent Trial and Appeal Board recently granting a patent owner's motion to amend claims for just the third time in its nearly three-year history, it seems like a good time to review the high bar the Board has set for such motions. See REG Synthetic Fuels, LLC v. Neste Oil OYJ, IPR2014-00192, Paper 48, 18-30 (PTAB June 5, 2015); Riverbed Tech. Inc. v. Silver Peak Sys. Inc., IPR2013-00402, Paper 35 (PTAB Dec. 30, 2014); Int'l Flavors & Fragrances Inc. v. United States, IPR2013-00124, Paper 12 (PTAB May 20, 2014).

As the moving party, a patent owner wishing to amend claims during a PTAB post-issuance proceeding must establish that it is entitled to the requested relief. 37 C.F.R. § 42.20. The Board has set out the following procedural and substantive requirements for a motion to amend claims:

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