January 16, 2015
Authored and Edited by Megan Leinen Johns; Anthony A. Hartmann
The PTAB granted-in-part the first opposed motions to amend in two IPR trials concerning network memory systems. Riverbed Technology, Inc. v. Silver Peak Systems, Inc., IPR2013-00402 (Dec. 30, 2014) (Paper 35 ); IPR2013-00403 (Dec. 30, 2014) (Paper 33). In both decisions, the PTAB granted the motions to cancel all original claims and add two independent proposed substitute claims, but denied with respect to the remaining four proposed substitute claims.
In IPRs, PGRs, and CBMs, the Patent Owner may move to amend the claims. The PTAB has provided guidance regarding the requirement for motions to amend in four representative decisions: Nichia; Idle Free; Int'l Flavors; and Corning Optical. For example, the PTAB identified some “shoulds” for the Patent Owners, including:
The PTAB also noted that the Patent Owner “can” rely on an expert to show:
Despite these “shoulds,” during the Riverbend proceedings, the Patent Owner:
The PTAB also noted that the Petitioner did not:
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