On June 1, 2018, PTAB designated a new informative order on motions to amend and de-designated two prior precedential decisions. The new informative order provides guidance on motion to amend in AIA trials. Western Digital Corp. v. SPEX Techs., Inc., IPR2018-00082, -00084 (PTAB Apr. 25, 2018) (Paper 13). According to the order, (1) motion to substitute claims is contingent and will be considered only if a preponderance of evidence establishes that original claim it replaces is unpatentable; (2) burden of persuasion will be on petitioner to show by a preponderance of evidence that proposed substitute claims are unpatentable and the Board determines based on the entire record including petitioner's opposition; (3) patent owner must propose a reasonable number of substitute claims if it presents more than one substitute claim per challenged claim; (4) motion to amend responds to ground(s) of unpatentability including potential 101 or 112 issues, in addition to any 102 or 103, and a proper substitute claim must narrow the scope of challenged claim it replaces; (5) substitute claims may not enlarge the scope of claims in the challenged patent or introduce new subject matter; (6) a claim listing, reproducing each proposed substitute claim, is required; (7) motion to amend and opposition to motion are limited to 25 pages and patent owner's reply is limited to 12 pages; and (8) all parties have a duty of candor, and information about an added limitation may be material and patent owner should consider each added limitation when considering its duty of candor.
Full text of informative order is available here.
Full text of informative order is available here.
RSS Feed
