3 Takeaways As Fed. Circ. Boosts PTAB Amendment Scrutiny
In a split panel decision on July 22, 2020, the Federal Circuit endorsed the PTAB’s existing practice of addressing subject matter eligibility when reviewing proposed claim amendments submitted as part of an IPR motion to amend. The majority’s holding reinforces the fact that patent owners should not only be prepared to defend against anticipation and obviousness challenges as part of the motion to amend process, but that they also need to consider whether there are any underlying written description, enablement, or subject matter eligibility issues that may undermine the proposed amendment. I previously addressed the PTAB’s decision in this case in my February 1, 2019 article (which can be found here).