PTAB Provides “Informative” Guidance Concerning Motions To Amend In Inter Partes Reviews

Venable Fitzpatrick Case Update
June 5, 2018

On June 1, 2018, the Patent Trial and Appeal Board (“PTAB” or “Board”) designated as “informative” an April 25, 2018 order from Western Digital Corp. v. SPEX Technologies, Inc., IPR2018-00082 and IPR2018-00084 (Paper 13).  Although not precedential, the order provides guidance concerning the Board’s treatment of motions to amend patent claims challenged in inter partes review (“IPR”) proceedings after Aqua Products, Inc. v. Matal, 872 F.3d 1290 (Fed. Cir. 2017), an October 2017 decision in which the en banc Federal Circuit held that a patent owner in an IPR proceeding does not bear the burden of demonstrating the patentability of substitute claims presented in a motion to amend.

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