Lectrosonics, Inc. v. Zaxcom, Inc., Case IPR2018-01129, 01130, Paper 15
Pursuant to 35 U.S.C. § 316(d), a patent owner is entitled to file a motion to amend in an inter partes review. Recently, the Patent Trial and Appeal Board (PTAB) designated its order issued in Lectrosonics, Inc. v. Zaxcom, Inc., Case IPR2018-01129, 01130 (PTAB February 25, 2019) (Paper 15), which provides guidance and information on statutory and regulatory requirements for a motion to amend, as precedential. The order, authored by Administrative Patent Judges Kalyan Deshpande, Scott Boalick and Lynne Pettigrew, provides guidance on:
- contingent motions to amend;
- the burden of persuasion that applies when considering the patentability of substitute claims;
- what constitutes a reasonable number of substitute claims;
- the requirement that the amendment respond to a ground of unpatentability involved in the trial;
- the scope of proposed substitute claims;
- the requirement that a patent owner provide a claim listing with its motion to amend;
- default page limits that apply to motion to amend briefing; and
- the duty of candor as applied to motions to amend.
With regard to contingent motions to amend, the order states a request to substitute claims will be treated as contingent, whereas a request to cancel claims will not. The order instructs patent owners to “adopt a claim-by-claim approach to specifying the contingency of substitution, e.g., which claim is to be substituted for which claim and under what circumstances.”
In accordance with the Federal Circuit decisions in Aqua Products, Inc. v. Matal, 872 F.3d 1290 (Fed. Cir. 2017) and Bosch Automotive Service Solutions, LLC v. Matal, 878 F.3d 1027 (Fed. Cir. 2017), the order discusses the burden of persuasion that the Board applies when considering the patentability of substitute claims presented in a motion to amend. “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.”
The order also discusses requirements and guidance concerning whether a motion to amend meets the statutory and regulatory requirements set forth in 35 U.S.C. § 316(d) and 37 C.F.R. § 42.121. With regard to the reasonable number of substitute claims, the order states “[t]here is a rebuttable presumption that a reasonable number of substitute claims per challenged claim is one (1) 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.” The Board will determine whether the proposed substitute claims are reasonable on a claim-by-claim basis. To assist the Board in determining whether a motion to amend meets the requirements, the motion for each proposed substitute claim should specifically identify the challenged claim it is intended to replace and be traceable to an originally challenged claim.
In considering a motion to amend, the Board states it will “review the entirety of the record to determine whether a patent owner’s amendments respond to a ground of unpatentability involved in the trial.” The order clarifies that amendments are not limited to only those that overcome an instituted ground. Rather, once a proposed claim includes amendments to address a prior art ground in the trial, the patent owner may also include additional limitations to address other issues if necessary.
The Board also clarified 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.” To meet the requirement that no new matter be introduced, “citation should be made to the original disclosure of the application, as filed, rather than to the patent as issued,” and “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.”
Motions to amend must also include a claim listing reproducing each proposed substitute claim. The order advises that “use of brackets to indicate deleted text and underlining to indicate inserted text is strongly suggested.” The claim listing may be filed as an appendix to the motion and will not count toward the page limit for the motion. The order also states motions to amend are limited to 25 pages in length, a patent owner’s reply is limited to twelve pages, and a petitioner’s sur-reply is limited to twelve pages. The parties may request additional pages or briefing from the Board.
The order concludes with the Board reminding the parties of their duty of candor, which “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.” “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.”
This decision replaces Western Digital Corp. v. SPEX Techs., Inc., Case IPR2018-00082, -00084 (PTAB April 25, 2018) (Paper 13).
- Motion to Amend should specify whether it is contingent or not.
- Motion to Amend must specify, claim-by-claim, which claim is to be substituted for which claim and under what circumstances.
- If proposing more than one substitute claim per challenged claims, must explain why the number of proposed substitute claims is reasonable.
- Must include amendment to address a prior art ground in the trial but may include additional limitations to address other issues.
- Should cite to support for each amendment in the original disclosure of the application, as filed, rather than to the patent as issued.