The first real post-Aqua guidance issued from the Board on June 1, 2018 for motions to amend. Western Digital Corp. v. SPEX Technologies, Inc., IPR2018-00082 and IPR2018-00084 (Paper 13). According to the Western Digital order:
- The Board will ordinarily treat a request to substitute claims as contingent - a proposed substitute claim will be considered only if a preponderance of the evidence establishes that the original patent claim it replaces is unpatentable.
- 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 a petitioner opposition.
- A rebuttable presumption is established under 37 C.F.R. § 42.121(a)(3) that a reasonable number of substitute claims per challenged claim is one substitute claim. To 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.
- Once a proposed claim includes amendments to address a prior art ground in the trial, a patent owner can include additional limitations to address potential § 101 or § 112 issues.
- 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. The 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.
- Even though a claim listing reproducing each proposed substitute claim is required by 37 C.F.R. § 42.121(b), the claim listing can be an appendix to the motion to amend and won’t count toward the page limit for the motion.
- A motion to amend and any opposition to the motion are limited to twenty-five pages, but additional pages can be requested.
- Both parties owe a duty of candor to the Board in connection with motions to amend. That 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. And a petitioner has a duty of candor in relation to relevant information that is inconsistent with a position advanced by the petitioner.
This article appeared in the June 2018 issue of PTAB Strategies and Insights. To view our past issues, as well as other firm newsletters, please click here.