A recent Federal Circuit decision that the Patent Trial and Appeal Board can devise its own reasons for rejecting proposed amended patent claims will ensure that amendments aren’t issued without close scrutiny, while still letting patentees make the case that the changes should be allowed.
It has long been very difficult for patent owners to secure amended claims in IPRs, and the Federal Circuit’s ruling means that it will still be a challenge. But the court’s holding that the parties must be notified when the board is going to use a new theory at least gives patent owners a way to push back, said Kevin Moran of Michael Best & Friedrich LLP.
“I think it's a legitimate procedural avenue. I don't think the board is going to give that short shift,” he said. “I think they will give any patent owner response serious consideration, and will make sure that they address any concerns from the patent owner in the final written decision.”
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