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  • Patent Trial And Appeal Board Designates As Precedential Opinion Instructing On Claim Amendments.
    06/13/2018
    On June 1, 2018, the Patent Trial and Appeal Board (“PTAB”) of the United States Patent and Trademark Office designated as precedential an opinion in which it issued instructions concerning patent claim amendments in inter partes review (“IPR”) proceedings.  Western Digital v. SPEX Techs., Case No. IPR2018-00082, paper no. 13 (April 25, 2018).  The PTAB also made a specific note of the duty of candor applicable to both patent owners and petitioners.

    35 U.S.C. § 316(d) provides for the amendment of patent claims during IPR proceedings.  In the now-precedential Western Digital opinion, the PTAB explained, with respect to motions to amend:
    • Amended claims ordinarily replace an original claim found to be unpatentable, and so proposed amendments will ordinarily be entered only if an original claim is found to be unpatentable;
    • There is a rebuttable presumption that only one amended claim will be entered for each original claim found to be unpatentable;
    • When moving to amend, the patent owner should specify which amended claim would be entered in place of which original claim;
    • The patent owner has no burden to prove patentability of amended claims, and instead the burden is on the petitioner and the PTAB itself to prove proposed amended claims unpatentable by a preponderance of the evidence of record in the IPR;
    • Amended claims must respond to a ground of unpatentability at issue in the IPR, but as long as they do so, they may also include amendments intended to address issues of patentability under 35 U.S.C. §§ 101 and 112, but must not enlarge the scope of the claims; and
    • The patent owner must include in its motion to amend specific citations showing written-description support in the originally-filed applications for the entire amended claim, not just the feature added by amendment.
    In addition to issuing these clear instructions concerning claim amendments, the PTAB explicitly reminded practitioners of their duty of candor to the office.  Interestingly, the PTAB made a special note that the duty applies to petitioners as well as to patent owners.  Thus, the PTAB explained a petitioner would be obliged to disclose “objective evidence of non-obviousness of proposed substitute claims,” if the evidence is not already in the record.

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