Handling Dependent Claims in a Motion to Amend

In Google Inc. v. Arendi S.A.R.L., IPR2014-00452, Paper 16 (October 27, 2014), the Board advised the patent owner on addressing dependent claims when an independent claim is amended.  The Board advised the patent owner that that it could propose substitute dependent claims that include the same limitations as the original dependent claims 2–79 but depend from proposed substitute new independent claim, and that if these claims are the same as the original claims except that they depend from a proposed substitute independent claim, the patent owner can list the proposed substitute dependent claims in a claims appendix, which would not count toward the fifteen page limit for motions 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.