Amending Dependent Claims — Listing Doesn’t Count Toward Page Limits

In Micro Motion, Inc. v. Invensys System, Inc., IPR2014-00179, Paper 22, IPR2014-00167, Page 24  (August 11, 2014), the Board informed the patent owner that it must address each proposed substitute independent claim in the Motion to Amend, itself, but that it may provide a claim listing that includes proposed substitute dependent claims that only are amended to depend from each new, substitute independent claim. The Board indicated that such a claim listing does not count towards the fifteen page limit for a Motion to Amend.

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About Bryan Wheelock

Education J.D., Washington University in St. Louis B.S.E. in Mechanical Engineering, Duke University Bryan Wheelock's practice includes preparation and prosecution of patent and trademark applications and drafting of intellectual property agreements, including non-compete agreements. He has brought and defended lawsuits in federal and state courts relating to intellectual property and has participated in seizures of counterfeit and infringing goods. Bryan prepares and prosecutes U.S. and foreign patent applications for medical devices, mechanical and electromechanical devices, manufacturing machinery and processes, metal alloys and other materials. He also does a substantial amount of patentability searching, trademark availability searching and patent and trademark infringement studies. In addition to his practice at Harness Dickey, Bryan is an Adjunct Professor at Washington University School of Law and Washington University School of Engineering.