June 7, 2018
Law360
By James D. Stein; David C. Reese
The Patent Trial and Appeal Board community of petitioners, patent owners, practitioners, PTAB judges and U.S. Patent and Trademark Office administrators has its hands full ensuring pending PTAB proceedings comport with last month’s U.S. Supreme Court decision in SAS Institute Inc. v. Iancu (April 24, 2018). This flare-up has temporarily drawn the spotlight away from another hot PTAB topic: motions to amend.
Since their inception, PTAB post-grant review procedures have drawn criticism by some for limited number of cases in which the PTAB has granted a patent owner’s motion to amend. More recently, however, decisions by the U.S. Court of Appeals for the Federal Circuit and subsequent guidance by the PTAB have made moving to amend a more attractive strategy for patent owners. Patent owners have started to take notice, as exemplified by the fact that the number of motions to amend filed halfway into fiscal year 2018 already matches the total number of motions filed in 2017.1
In dealing with the SAS fallout, some may have overlooked a recent order providing the PTAB’s most up-to-date guidance on motions to amend, Western Digital Corporation, v. Spex Technologies Inc.2 On June 1, 2018, the PTAB designated this order precedential and de-designated its earlier orders on motions to amend in MasterImage 3D Inc. v. RealD Inc.3 and Idle Free Systems Inc. v. Bergstrom Inc.4
In Western Digital, the panel synthesized the Federal Circuit’s recent decisions in Aqua Products Inc. v. Matal,5 Bosch Automotive Service Solutions LLC v. Matal,6 and a subsequent Bosch order on rehearing to make clear that "a patent owner does not bear the burden of persuasion to demonstrate the patentability of substitute claims presented in a motion to amend."7 Instead, "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," although "[t]he Board itself also may justify any finding of unpatentability by reference to evidence of record in the proceeding."8
Western Digital takes the PTAB’s Nov. 21, 2017, "Guidance on Motions to Amend in View of Aqua Products" a step further regarding the obligations of the petitioner. In its guidance, the PTAB said that "[t]he Board will not place the burden of persuasion on a patent owner" and that "the Board will proceed to determine whether the substitute claims are unpatentable by a preponderance of the evidence based on the entirety of the record, including any opposition made by the petitioner."9 But the PTAB did not go so far as to say that the burden of persuasion will ordinarily lie with the petitioner as it did in Western Digital.
Moving beyond the burden-of-persuasion issue, Western Digital also spells out what the PTAB typically expects to see in future motions to amend:
It will be interesting to see how parties implement this new guidance on motions to amend and whether it will translate to more successful motions to amend.
Endnotes
1 See June 5, 2018, Chat with the Chief, slide 13. https://www.uspto.gov/sites/default/files/documents/chat_with_chief_june_6.5.18.pdf.
2 Western Digital Corporation, v. Spex Technologies, Inc., IPR2018-00082, Paper 13 (Apr. 25, 2018)
3 MasterImage 3D, Inc. v. RealD Inc., IPR2015-00040, Paper 42 (Jul. 15, 2015)
4 Idle Free Sys., Inc. v. Bergstrom, Inc., IPR2012-00027, Paper 26 (Jun. 11, 2013).
5 Aqua Products, Inc. v. Matal, 872 F.3d 1290 (Fed. Cir. 2017)
6 Bosch Automotive Service Solutions, LLC v. Matal, 878 F.3d 1027 (Fed. Cir. 2017)
7 Western Digital order at 4.
8 Id. at 4.
9 Nov. 21, 2017 Guidance at 2.
10 Western Digital order at 3.
11 Id.
12 Id. at 4-5.
13 Id. at 5.
14 Id.
15 Id. at 6.
16 Id.
17 Id.
18 Id. at 8.
19 Id.
20 Id.
21 Id. at 7.
22 Id.
23 Id. at 9.
24 Id.
25 Id.
Originally printed in Law360 on June 7, 2018. This article is for informational purposes, is not intended to constitute legal advice, and may be considered advertising under applicable state laws. This article is only the opinion of the authors and is not attributable to Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, or the firm’s clients.
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