For Substitute Claims, "Possession is Nine-Tenths of the Law", PTAB Litigation Blog

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On March 20, 2018, the PTAB issued a Final Written Decision in Kapsch TrafficCom IVHS Inc. v. Neology, Inc., Case IPR2016-01763, Paper 60 (PTAB Mar. 20, 2018), finding that Petitioner Kapsch TrafficCom IVHS Inc. (“Kapsch”) had proven by the preponderance of the evidence that claims 1-9 of U.S. Patent No. 8,944,337 B2 (“the ‘337 patent)—all of the claims in the patent—are unpatentable as anticipated and obvious. Notably, the PTAB also denied Patent Owner Neology, Inc.’s (“Neology”) Contingent Motion to Amend, which proposed substitute claims 10-18 to replace claims 1-9, respectively, in the event that the PTAB found claims 1-9 to be unpatentable. The PTAB found that Neology had failed to show that the original patent disclosure provides written description support for the substitute claims. In view of the PTAB’s decision and underlying analysis, Patent Owners (and their counsel) are reminded to ground any arguments for substitute claims on specific, explicit disclosures in the application as originally filed to establish the inventor’s possession of the proposed subject matter at the time of the filing date.

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