Final Written Decision Not Enough For Assertion Of Amended Claims, PTAB Litigation Blog
Claims added or amended during inter partes review (“IPR”) do not become part of a patent until the Patent Office officially says so by issuing an IPR certificate under 35 U.S.C. § 318(b). The patentee needs more than a Final Written Decision (“FWD”) to enforce these new claims. That’s the takeaway from a recent District Court decision from the Southern District of California, Pulse Elecs., Inc. v. U.D. Elec. Corp., No. 3:20-cv-01676, ECF No. 20 (S.D. Cal. Apr. 9, 2021).
Jones Day publications should not be construed as legal advice on any specific facts or circumstances. The contents are intended for general information purposes only and may not be quoted or referred to in any other publication or proceeding without the prior written consent of the Firm, to be given or withheld at our discretion. To request reprint permission for any of our publications, please use our “Contact Us” form, which can be found on our website at www.jonesday.com. The mailing of this publication is not intended to create, and receipt of it does not constitute, an attorney-client relationship. The views set forth herein are the personal views of the authors and do not necessarily reflect those of the Firm.