PTAB Grants Motion to Amend Claims, Kind Of

In Amerigen Pharmaceuticals Limited v. Shire LLC, IPR2015-02009 (March 31, 2017), the PTAB granted Shire's Motion to Amend the claims in U.S. Reissued Patent RE 42,096, listed in the FDA's Orange Book as covering Shire's Adderall XR®.

Without filing a Patent Owner Response, Shire moved to amend its patent by cancelling all of the claims that were instituted for trial and proposing one substitute claim. The proposed substitute claim is identical to cancelled multiple dependent claim 25, except that dependencies from all instituted claims were deleted, whereas the dependencies on certain non-instituted claims were preserved. As Shire explained in its motion, "no claim is being amended, and claims are only being cancelled, because [the instituted claims] are being removed .... No other changes to the claims are being made."