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Inter Partes Review: Procedure for Amending Claims

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In IPR2012-00001, on January 25, 2013, the Patent Trial and Appeals Board (“PTAB”) (A.P.J.s Lee, Tierney and Cocks) issued an order regarding the conduct of proceedings (“Order”) in Garmin International, Inc. v. Cuozzo Speed Technologies, LLC. The Order followed a conference call to discuss any issues the parities may have about the Scheduling Order and the trial procedure. Of interest, the Board clarified the following issues:

  • The Federal Rules of Civil Procedure does not generally apply to this proceeding
  • Any proposed amendment or substitution of claims must explain how it obviates the ground of unpatentability underlying the institution of the IPR and where the corresponding description support in the specification can be found
  • The explanation should be contained in the motion to amend the claims which is separate from the Patent Owner’s Response
  • The motion to amend the claims should not make any change to claims which are not involved in the proceeding
    Finally, the Board denied the Patent Owner’s request to file a motion for joinder of Chrysler Corporation and JVC Inc. which are allegedly “privies” to the Petitioner on the grounds that the Patent Owner could not represent that either is currently a petitioner in a pending Inter Partes Review involving the patent-at-issue.

    This Order addresses additional procedural issues regarding the trial procedure before the Patent Trial and Appeals Board.

    Garmin International, Inc. et al. v. Cuozzo Speed Technologies, LLC, IPR2012-00001, Paper No. 18 (January 25, 2013) (J. Lee).

    The authors of www.PatentLawyerBlog.com are patent trial lawyers at Jeffer Mangels Butler & Mitchell LLP. The authors represent inventors, patent owners and technology companies in patent licensing and litigation in U.S. District Courts and in the United States Patent and Trademark Office, including numerous IPRs currently pending before the PTAB. Whether pursuing patent violations or defending infringement claims, we are aggressive and effective advocates for our clients. For more information contact Greg Cordrey at 949.623.7236 or GCordrey@jmbm.com.