Fact or Fiction: Can Patent Owners Really Amend Claims in Post-grant Review Proceedings?

Post-Grant Proceedings are only a few years old. The Patent Trials and Appeals Board and courts are still grappling with how to resolve patent validity disputes quickly and equitably. In this course, attorneys Stephen Lieb and Bryan Braunel discuss one major point of difficulty: whether a patent owner can amend claims in an IPR, PGR, or CBM proceeding. Here, they outline the requirements for amending a claim, the potential grounds for denial, and address recent PTAB and Federal Circuit decisions. In addition, they provide a bit of insight for the opposing view, touching on best practices for opposing a Motion to Amend. Overall, Mr. Lieb and Mr. Braunel assist the practitioner in understanding the when, where, and how of amending claims in these proceedings.

Learning Objectives:

1. Understand when a claim can be amended in a Post-Grant Proceeding
2. Recognize potential grounds for denial of a motion to amend
3. Analyze recent decisions, including Nike, Idle Free Systems, and Riverbed Technologies, among others
4. Identify best practices for opposing a Motion to Amend