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Lectrosonics, Inc. v Zaxcom, Inc., Case IPR2018-01129, 01130 (PTAB February 25, 2019) (Paper 15)
This order provides guidance and information regarding statutory and regulatory requirements for a motion to amend in light of Federal Circuit case law. Specifically, the order sets forth guidance, such as: (1) contingent motions to amend; (2) the burden of persuasion that the Office applies when considering the patentability of substitute claims; (3) the requirement that a patent owner propose a reasonable number of substitute claims; (4) the requirement that the amendment respond to a ground of unpatentability involved in the trial; (5) the scope of the proposed substitute claims; (6) the requirement that a patent owner provide a claim listing with its motion to amend; (7) the default page limits that apply to motion to amend briefing; and (8) the duty of candor. This decision replaces Western Digital Corp. v. SPEX Techs., Inc., Case IPR2018-00082, -00084 (PTAB April 25, 2018) (Paper 13).
This precedential decision can be found on the PTAB’s Precedential and Informative Decisions page of the USPTO website.
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