On June 1, 2018, the Patent Trial and Appeal Board (“PTAB”) designated as informative its April 25, 2018 order regarding Motions to Amend. Western Digital Corp. v. Spex Techs. Inc., IPR2018-0082, IPR2018-00084 (PTAB April 25, 2018) (Paper 13). The PTAB’s order provides guidance to practitioners on (1) contingent motions to amend, (2) the burden of persuasion with respect to substitute claims, (3) number of substitute claims, (4) requirement that amendments respond to unpatentability grounds, (5) scope of substitute claims, (6) claim listings, (7) page limits on briefs, and (8) duty of candor. This new order replaces MasterImage 3D, Inc. v. RealD Inc., IPR2015-00040 (PTAB July 15, 2015) (Paper 42) and Idle Free Sys. Inc. v. Bergstrom, Inc., IPR2012-00027 (June 11, 2013) (Paper 26), which the also PTAB de-designated as informative.
Contingent Motions to Amend
The PTAB stated that while cancelled claims are not regarded as contingent, a substitute claim will be considered only if the original patent claim it replaces is found unpatentable. The PTAB advised Patent Owners to specify for which challenged claims the contingent claims would be substituted.
Burden of Persuasion
The PTAB stated that when a Patent Owner presents substitute claims, it does not bear the burden of persuasion to demonstrate patentability. Instead, the burden of persuasion lies with the Petitioner to show the claims are unpatentable by a preponderance of the evidence.
Number of Substitute Claims
If a Patent Owner is presenting substitute claims, there is a rebuttable presumption that Patent Owner may present one substitute claim per challenged claim. Patent Owner may rebut this presumption upon a demonstration of a need to present more.
Responds to Unpatentability Grounds
A claim proposed in a motion to amend must respond to the unpatentability grounds set forth by the Petitioner. However, if responsive, a claim amendment also may address potential § 101 or § 112 issues that Patent Owner believes may arise. A Patent Owner may not, however, broaden any claims.
Scope of Claims
Patent Owners may not introduce new matter or broaden the scope of their claims. Moreover, the proposed claims must have written description support in the originally filed disclosure of the patent application. To meet this requirement, Patent Owner should provide citation to the original application disclosure, not the issued patent.
The Patent Owner must file a claim listing reproducing each proposed substitute claim. This may be an appendix to the motion and does not count towards the page limit.
Default Page Limits
Motions to amend are limited to twenty-five pages.
Duty of Candor
All parties have a duty of candor. This includes Patent Owner’s duty of candor to disclose to the Board information of which it is aware that is material to the patentability of any substitute claims, if the information is not already of record.
In short, Western Digital now provides guidance for proceeding at the Board after the Federal Circuit’s ruling in Aqua Products, Inc. v. Matal, 872 F.3d 1290 (Fed. Cir. 2017), which held that a Petitioner bears the burden of proof regarding the patentability of proposed amended claims, but did not delve into issues of procedure.