NEWSLETTER ARCHIVE
Volume 47, Issue 4
IPR Motions to Amend: Rays of Hope for Patent Owners Despite Gloomy Statistics
The
America Invents Act (AIA)
permits patent owners to move
to amend claims of a patent subject to
inter partes
review
. However, attempts to amend claims have been largely unsuccessful to date, and some of the hurdles patent owners face are not set forth in the rules. We first review statistics and relevant case law to survey the development of motion to amend practice, including the
Shinn Fu
1 decision from earlier this year, the first decision to grant a motion to amend after guidance provided by a few notable Patent Trial & Appeal Board (Board) and Federal Circuit decisions. We conclude with recommendations and practice tips for a successful motion to amend.
Motion to Amend Statistics and Practice
Motions to amend can be grouped into two buckets: (1) motions seeking cancellation of claims; and (2) motions seeking substitution of pending claims with amended claims. Regarding the first category, as of May 19, 2016, the Board has granted all 32 filed motions that sought cancellation of claims. The second category, however, has faced nearly the opposite result—of the 146 motions to amend as of May 19, 2016, the Board has only granted four:
International Flavors
2, two for related
Riverbed Technology
IPRs3, and
Shinn Fu
. These four decisions are discussed below chronologically with pertinent case law. Earlier this year, the United States Patent and Trademark Office (PTO) released
Amendments to the Rules of Practice for Trials Before the Patent Trials and Appeal Board
(“The 2016 Amendments”) that took effect on May 2, 2016. The 2016 Amendments do not make any changes to the rules for motions to amend, but in response to comments, the amendments indicated that the PTO would “further consider ways to promote uniformity in the requirements for a motion to amend, such as by designating opinions precedential, issuing a standing order setting forth what requirements govern a proceeding for motions to amend, or other means.” Thus, for now, the PTO has left patent owners to sift through Board and Federal Circuit decisions to understand the state of motion to amend practice. The 2016 Amendments address two important decisions that have contributed to the development of motion to amend practice: (1)
Idle Free Systems
4 and (2)
MasterImage 3D
5. In the 2013
Idle Free
decision, the Board explained that the patent owner—not the petitioner—bears the burden to show a “patentable distinction over the prior art of record and also prior art known to the patent owner.” The 2016 Amendments explain that the ultimate burden of persuasion always remains with the patent owner. However, the burden of production shifts to the petitioner once the patent owner sets forth a
prima facie
case of patentability of narrower claims. In response, the petitioner may explain why the patent owner did not make a
prima facie
case, or may attempt to rebut that
prima facie
case by addressing the patent owner’s evidence and arguments and/or by identifying and applying additional prior art. The patent owner can address these arguments and any new references in its reply. Between the
Idle Free
and
MasterImage 3D
decisions, the Board granted the
International Flavors
and
Riverbed Technology
motions to amend. The May 20, 2014 decision in
International Flavors
was notable as the first in which the Board permitted amendment of claims in an IPR. The motion was unopposed, but the Board still confirmed that (1) the proposed substitute claims were narrower than the original claims, (2) the motion set forth support for the amendments in the specification, and (3)
International Flavors
demonstrated that the claims were patentable over the prior art in general. On December 30, 2014, the Board granted, in part, two motions to amend in two related IPRs filed by petitioner
Riverbed Technology
. The facts of the
Riverbed Technology
decisions are somewhat atypical given that the patent owner did not submit a declaration in support of the claim amendments and used dependent claims as the basis for the amendments. Additionally, in its opposition, the petitioner did not challenge written description support, or identify a reference that taught certain limitations of the claims. In the 2015
MasterImage 3D
decision, the Board provided clarification by expounding on what the phrases “prior art of record” and “prior art known to the patent owner” mean from the Idle Free decision. To demonstrate patentability over the “prior art of record,” the patent owner needs to distinguish over (a) material art in the prosecution history of the patent, (b) material art in the current proceeding, and (c) any material art of record in any other proceeding before the Board. To demonstrate patentability over “prior art known to the patent owner,” the patent owner must distinguish over any art “provided in light of a patent owner’s duty of candor, and any other prior art or arguments supplied by the petitioner.” While not addressed in the 2016 Amendments, after
Idle Free
and
Master Image 3D
the Federal Circuit decided the
Nike, Inc. v. Adidas AG
appeal in 2016, requiring the Board to reconsider its denial of the patent owner’s motion to amend. On whether the patent owner satisfied its duty of candor when demonstrating patentability, the Federal Circuit held that the patent owner’s simple statement that the claims were patentable over the prior art known to it but not of record
satisfied
the patent owner’s duty even though it did not substantively discuss any of those references. The PTO conceded on appeal that given the clarification in
MasterImage 3D
—issued after the Board’s decision in the IPR—the Board’s decision finding that the patent owner’s statement was insufficient for failing to address any specific references that were known to it but not of record was too aggressive.
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2016 Ⓒ Boston Patent Law Association
Published by the BPLA with authors’, WilmerHale’s, and Law360’s permission. This article appears on WilmerHale’s blog on
May 19, 2016
. This article appeared on Law360 on
May 19, 2016
.
Index
Community Calendar
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Table of Contents
President's Message by Erik Belt
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BPLA Submitted
Amicus
Brief in Design Case of the Century
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< Back
Message from the Editor-in-Chief
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The Defend Trade Secrets Act: Examining the DTSA’s Language, Use, and Future
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BPLA's ANNUAL MEETNG AND LUNCHEON
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RESTORING THE PATENT SYSTEM: Countering Supreme Court Attacks on What Can Be Patented
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IPR Motions to Amend: Rays of Hope for Patent Owners Despite Gloomy Statistics
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Nominations for the BPLA Officers and Board of Governors for 2016-2017
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In re Aqua Products
: Claim Amendments During
Inter Partes
Review
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Proposed Membership By-Law Change
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The 2016
Invented Here!
Event
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2015 BPLA Annual Meeting Minutes
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Ex Parte
Reexamination as a Valuable Option for Challenging Patent Claims
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PTAB Bar Asssociation
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McRO v. Bandai
: Latest Federal Circuit § 101 Decision Breathes New Life into Software Patents
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Members on the Move
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