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:
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.