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ARTICLE · 13 JANUARY 2020

Motion To Amend Available Only For Challenged Claims

Jones Day
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In Apple v. Uniloc 2017 LLC, [1] the patent owner moved to amend the claims contingent on an unpatentability finding by the Board. The contingent amendment cancelled the original claims

United StatesIntellectual Property
Jones Day
Jones Day
David Maiorana
David Maiorana
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In Apple v. Uniloc 2017 LLC, 1 the patent owner moved to amend the claims contingent on an unpatentability finding by the Board. The contingent amendment cancelled the original claims and replaced them with a new claim set. The original claims were numbered 1 through 33. The proposed substitute claims were numbered 34 through 65. The substitute claims mirrored the original claims, which included two independent claims and 31 dependent claims. The patent owner added two substantive limitations to each independent claim. The remaining contingent proposed amendments were merely procedural to adjust the dependency of the original dependent claims to the new claim set. Interestingly, the patent owner proposed amending dependent claims 11, 12, and 27, which were not challenged in the petition.

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