On 1 June 2018 the Patent Trial and Appeal Board (PTAB) designated as 'informative' a 25 April 2018 order from Western Digital Corp v SPEX Technologies, Inc.(1)(2) Although not precedential, the order provides guidance concerning the PTAB's treatment of motions to amend patent claims challenged in inter partes review proceedings following Aqua Products, Inc v Matal(3) – an October 2017 decision in which the en banc Federal Circuit held that a patent owner in an inter partes review proceeding does not bear the burden of demonstrating the patentability of substitute claims presented in a motion to amend.
Overview of Western Digital order
According to the Western Digital order, the PTAB will:
ordinarily treat a request to substitute claims as contingent. That means a proposed substitute claim normally will be considered only if a preponderance of the evidence establishes that the original patent claim it replaces is unpatentable.
Further, the order states that:
the burden of persuasion will ordinarily lie with the petitioner to show that any proposed substitute claims are unpatentable by a preponderance of the evidence... the Board determines whether substitute claims are unpatentable by a preponderance of the evidence based on the entirety of the record, including any opposition made by the petitioner.
37 CFR § 42.121(a)(3) establishes a rebuttable presumption that a reasonable number of substitute claims per challenged claim is one substitute claim:
[T]o the extent a patent owner seeks to propose more than one substitute claim for each cancelled claim, the patent owner should explain in the motion to amend the need for the additional claims and why the number of proposed substitute claims is reasonable.
According to the order:
[O]nce a proposed claim includes amendments to address a prior art ground in the trial, a patent owner also may include additional limitations to address potential § 101 or § 112 issues, if necessary.
The order goes on to state that:
A motion to amend may not present substitute claims that enlarge the scope of the claims of the challenged patent or introduce new subject matter… [T]he motion must set forth written description support for each proposed substitute claim as a whole, and not just the features added by the amendment. This applies equally to independent claims and dependent claims, even if the only amendment to the dependent claims is in the identification of the claim from which it depends.
While a claim listing which reproduces each proposed substitute claim is required by 37 CFR § 42.121(b), "[t]he claim listing may be filed as an appendix to the motion to amend, and shall not count toward the page limit for the motion".
A motion to amend, and any opposition to the motion, are limited by default to 25 pages, although the parties may contact the PTAB to request additional pages.
Finally, both parties owe a duty of candour to the PTAB in connection with motions to amend. This duty includes:
a patent owner's duty to disclose to the Board information of which the patent owner is aware that is material to the patentability of substitute claims, if such information is not already of record in the case… Likewise, a petitioner should keep in mind that it has a duty of candor in relation to relevant information that is inconsistent with a position advanced by the petitioner during the proceeding.
For further information on this topic please contact Christopher Loh at Fitzpatrick, Cella, Harper & Scinto by telephone (+1 212 218 2100) or email ([email protected]). The Fitzpatrick, Cella, Harper & Scinto website can be accessed at www.fitzpatrickcella.com.
Endnotes
(1) IPR2018-00082 and IPR2018-00084 (Paper 13).
(2) The full order is available at www.uspto.gov/sites/default/files/documents/IPR2018-00082%20Order%20-%20Information%20and%20Guidance%20on%20Motions%20to%20Amend.pdf.
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