Final Written Decision Not Enough For Assertion Of Amended Claims, PTAB Litigation Blog

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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).

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