PTAB decisions
PTAB Decisions on Motions to Amend
These notes trace how the Board has handled motions to amend in inter partes review, from the early Idle Free guidance through Aqua Products and later practice.
A patent owner may move to amend once during an IPR by cancelling claims or proposing a reasonable number of substitute claims (35 U.S.C. § 316(d)). The burden and procedure have shifted over time, most notably after Aqua Products, Inc. v. Matal (Fed. Cir. 2017) (en banc) and the Board’s later guidance and rules.
Designations and rules change. Before relying on any decision, confirm its current status on the USPTO PTAB pages.
Decisions in this category
- Corning Optical v. PPC Broadband (IPR2014-00441): Guidance after a Conference to Confer on AmendmentIPR2014-00441
- Idle Free v. Bergstrom (IPR2012-00027): The Board’s Early Guidance on Motions to AmendIPR2012-00027
- International Flavors & Fragrances v. United States (IPR2013-00124): A Motion to Amend Granted in PartIPR2013-00124
- MasterImage 3D v. RealD (IPR2015-00040): Clarifying the Idle Free Motion-to-Amend BurdenIPR2015-00040
- Nichia v. Emcore (IPR2012-00005): Conferring and Written Description Support for Substitute ClaimsIPR2012-00005
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