No Relief for Patent Owners

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In Riverbed Technology, Inc. v. Silver Peak Systems, Inc., IPR2013-00402, IPR2013-00403 Paper 22, (March 27, 2014), the Patent Owner also requested five additional pages for each of its motions, arguing that its proposed substitute claims occupy a significant portion of the 15 pages allotted. The Petitioner did not oppose Patent Owner’s request, but the Board nevertheless denied it, saying:

We do not view the issues involved in these proceedings to be overly complex, or the claims to be so voluminous, such that it would be unreasonable for Patent Owner to meet the 15-page limit for motions to amend. See 37 C.F.R. § 42.24(a)(1)(v). Patent Owner is encouraged to propose focused amendments for a limited set of claims and use the bulk of its motion to explain why the motion should be granted.

Whether or not the amendments are focused does not really address the patent owner’s plight that reproducing the text of the claims takes up a substantial portion of the allotted fifteen pages.  Also, whether or not the Board sees the issues as complex, the fact remains that 15 pages has not been enough for a single patent owner to success in amending even one claim.

Topics:  Patent Litigation, Patent Ownership, Patents

Published In: Civil Procedure Updates, Intellectual Property Updates

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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