PTAB Updates Amendment Precedent
Today, the Patent Trial & Appeal Board (PTAB) designated
Lectrosonics, Inc. v. Zaxcom, Inc,
(IPR2018-01129, 01130, Paper 15 (Feb. 25, 2019) precedential as to
the agency's interpretation of 35 U.S.C § 316(d),
amendment requirements and burden.
The Order provides guidance and information regarding statutory
and regulatory requirements for a motion to amend in light of
Federal Circuit case law. Specifically, the order sets forth
guidance, such as: (1) contingent motions to amend; (2) the burden
of persuasion that the Office applies when considering the
patentability of substitute claims; (3) the requirement that a
patent owner propose a reasonable number of substitute claims; (4)
the requirement that the amendment respond to a ground of
unpatentability involved in the trial; (5) the scope of the
proposed substitute claims; (6) the requirement that a patent owner
provide a claim listing with its motion to amend; (7) the default
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