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ARTICLE · 02 FEBRUARY 2014

The PTAB’s User Manual For Amending Claims

McDermott Will & Emery
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In what is only the second final written decision of an inter partes review (IPR), the United States Patent and Trademark Office Patent Trial and Appeals Board (Board) cancelled all claims under review, finding for petitioner and delineating the requirements the Board will expect patent owners to meet when seeking to amend claims in future IPR proceedings.

United StatesIntellectual Property
G. Matthew McCloskey
G. Matthew McCloskey
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Idle Free Systems, Inc. v. Bergstrom, Inc.

In what is only the second final written decision of an inter partes review (IPR), the United States Patent and Trademark Office Patent Trial and Appeals Board (Board) cancelled all claims under review, finding for petitioner and delineating the requirements the Board will expect patent owners to meet when seeking to amend claims in future IPR proceedings.  Idle Free Systems, Inc. v. Bergstrom, Inc., Case IPR2012-00027 (PTAB, Jan. 7, 2014).   

The petitioner, Idle Free Systems, filed a petition for IPR of a patent owned by Bergstrom, which Bergstrom had asserted against Idle Free in a district court action.  The invention relates to an automobile air conditioning system that operates at different speeds based on available power sources, which can include the running engine of the vehicle, its battery and other power sources such as an onboard generator or an electrical outlet.  The invention allegedly automatically alters

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