ARTICLE
5 January 2023

Patent Owner May Amend Claims In IPRs To Address §§ 101 And 112 Issues

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Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
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Finnegan, Henderson, Farabow, Garrett & Dunner, LLP is a law firm dedicated to advancing ideas, discoveries, and innovations that drive businesses around the world. From offices in the United States, Europe, and Asia, Finnegan works with leading innovators to protect, advocate, and leverage their most important intellectual property (IP) assets.
The Federal Circuit also held that a clear typographical error does not render the claims unpatentable for lack of enablement.
United States Intellectual Property
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In American National Manufacturing Inc. v. Sleep Number Corp., Nos. 21-1321, 21-1323, 21-1379, 21-1382 (Fed. Cir. Sept. 29, 2022), the Federal Circuit held that as long as a proposed claim amendment does not enlarge the scope of the claims, does not add new matter, and responds to a ground of unpatentability in the proceeding, the patent owner may also make additional amendments to a claim. The Federal Circuit also held that a clear typographical error does not render the claims unpatentable for lack of enablement. For a more detailed analysis of this case, please read "Dialing up Fixes to your Patent Claims: So Relaxing!"

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ARTICLE
5 January 2023

Patent Owner May Amend Claims In IPRs To Address §§ 101 And 112 Issues

United States Intellectual Property
Contributor
Finnegan, Henderson, Farabow, Garrett & Dunner, LLP is a law firm dedicated to advancing ideas, discoveries, and innovations that drive businesses around the world. From offices in the United States, Europe, and Asia, Finnegan works with leading innovators to protect, advocate, and leverage their most important intellectual property (IP) assets.
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