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Written March 13, 2019

The US Patent and Trademark Office (USPTO) Patent Trial and Appeal Board (PTAB) on March 7, 2019, designated as precedential Lectrosonics, Inc. v. Zaxcom, Inc, an order which provides guidance and information regarding statutory and regulatory requirements for a motion to amend in light of Federal Circuit case law. Case IPR2018-01129, 01130 (PTAB February 25, 2019) (Paper 15).

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.
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