PTAB: Shire Can Amend Multiple Dependent claim to Depend on Fewer Claims

In IPR2015-02009, Shire moved to amend claims of U.S. Reissued Patent RE 42,096 by cancelling all of the claims instituted for trial and proposing one substitute claim.  Specifically, Shire proposed that new claim 26 be substituted for claim 25 so that there would be no claim remaining subject to inter partes review.

25. The pharmaceutical composition of any one of claims 2, 13

or 18 to 20 wherein the pharmaceutically active amphetamine

salt in (a) and (b) comprises mixed amphetamine salts.

26. The pharmaceutical composition of any one of claims 2[[,]]

or 13 or 18 to 20 wherein the pharmaceutically active

amphetamine salt in (a) and (b) comprises mixed amphetamine

salts.

The PTAB allowed Shire’s amendment since “multiple dependent substitute claim 26 merely has the effect of eliminating three claims dependent on instituted claims 18–20, and preserving two claims dependent from non-instituted claims 2 and 13.. . effectively, no claim is being amended, and claims are only being cancelled, because claims 18–24 are being removed, and proposed claim 26 removes three multiple dependent claims (claim 25 as it depends from claims 18–20) and no other changes to the claims are being made.”

The PTAB’s decision in this case only applies to a situation where a patentee is canceling claims and not making other changes.