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Kill Rate of the Patent Death Squad, and the Elusory Right to Amend in Post-Grant Reviews -- Part II of II

By Richard Neifeld, Neifeld IP Law, PC1


In part I, I noted that the vast majority of claims attacked in IPRs that have reached a final decisions on patentability, were killed, and I suggested that was the result of the application of the broadest reasonable interpretation (BRI) combined with an elusory right to narrow the challenged claims. I identified the Board regulatory and case law requirements for grant of a motion to amend, including the guidance in the Board's representative decision in IPR2012-00027 providing guidance on the requirements to show a "patentable distinction over the prior art."2 Finally, I noted that, in IPR2012-00027, Bergstrom's (the patent owner's) renewed motion to amend overcame the prior art cited in the proceeding and complied with all formal requirements, and nevertheless was denied.


In order to understand why Bergstrom's motion was denied, we have to know where it stood in the context of the proceeding. I will walk you through the relevant filings of the parties and the Board to provide that context.

In IPR2012-00027, Idle Free Systems, Inc., the petitioner, filed its petition September 18, 2012, challenging patentability of claims 1-23 of U.S. P...

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