September 9, 2015Newsletter

PTAB Clarifies Motion to Amend Practice in Inter Partes Reviews

A Newsletter for Inter Partes Proceedings at the PTAB – September 2015

Before the Patent Trial and Appeal Board’s (The Board) informative decision in Idle Free Sys. v. Bergstrom, Inc.,[1] no guidance was available to patent owners suggesting how they might meet their burden of proof for a Motion to Amend claim in an Inter Partes review. Even after the helpful guidance provided in Idle Free, patent owners have grappled with several questions when preparing Motions to Amend.

In this issue, we discuss additional Motion to Amend practice guidance provided by the Board, and endorsed by the U.S. Patent and Trademark Office in a proposed amendment to the Rules of Practice for Trials Before the Patent Trial and Appeal Board[2] since Idle Free. We conclude with practice tips on how to implement this additional guidance to improve the chances of success of a Motion to Amend. 

Idle Free Guidance

The Idle Free decision was the first time that the Board provided guidance and established general requirements for amending claims in an Inter Partes review. Among other requirements, the Board articulated that the burden is not on the petitioner to show unpatentability, but on the patent owner to show a patentable distinction over (1) the prior art of record and (2) the prior art known to the patent owner. Despite this guidance, patent owners struggled to comply.

For example, in Sentair Technologies, Inc. v. Prolitec, Inc.,[3] the Board denied a motion to amend in part on the basis that the patent owner failed to address two material prior art references that disclosed the limitation at issue. Specifically, in its proposed substitute claim, the patent owner amended the original limitation “a diffusion head mounted to the reservoir” to read “a diffusion head permanently joined to the reservoir,” leaving the remainder of the proposed substitute claim identical to the original claim. In support, the patent owner asserted that none of the prior art of record or known to the patent owner disclosed a cartridge for use with a liquid diffusion device (the preamble of the proposed substitute claim) including “all of the limitations” of the proposed substitute claim. 

In its Final Written Decision, the Board concluded that the patent owner’s assertion was too general and conclusory to support the motion to amend and that the patent owner erred by not addressing two prior art references (“Allred” and “Poncelet”) known to the patent owner that taught the very limitation added in the proposed substitute claim (i.e., a diffusion head permanently joined to a reservoir). Allred was cited by the patent owner during prosecution of the challenged patent, while Poncelet was identified by the petitioner during a related lawsuit between the parties. While the patent owner deemed Allred and Poncelet immaterial due to a lack of disclosure of the remaining elements of the proposed substitute claim, the Board instead considered Allred and Poncelet as “secondary references” that, when combined with the other prior art of record, could have led one of ordinary skill in the art to conclude that the proposed substitute claim was obvious. 

In the subsequent case, REG Synthetic Fuels LLC v. Neste Oil Oyj,[4] the Board excused the patent owner’s failure to discuss in the motion to amend multiple prior art references known to the patent owner because the omitted prior art was not material to the added limitations in the proposed substitute claims. In REG, the Board emphasized that the Idle Free standard does not require the patent owner to address all relevant prior art, but only that which is material, with special focus and emphasis on the claim limitations added in the proposed substitute claims.     

Idle Free Guidance as Modified by MasterImage 3D

To avoid any confusion resulting from the Sentair and REG cases, the Board issued an Order in MasterImage 3D, Inc. v. RealD, Inc.[5] further specifying what constitutes (1) prior art of record and (2) prior art known to the patent owner under the Idle Free standard. 

“Prior art of record” includes (a) any material art in the prosecution history of the patent, (b) any material art of record in the current proceeding, including art asserted in grounds on which the Board did not institute review and (c) any material art of record in any other proceeding before the Office involving the patent. The common thread that ties these three categories is that the material art was before the Patent Office in a “Patent Office proceeding,” such as prosecution, reexamination, reissue and post-grant review. 

“Prior art known to the patent owner” is all other material prior art that the patent owner makes of record in the current proceeding (e.g., an IPR) pursuant to its duty of candor and good faith to the Patent Office pursuant to 37 C.F.R. § 42.11. While this may still seem a bit murky, the Board emphasized that the patent owner should place initial emphasis on the limitations added in a proposed substitute claim when determining the materiality of a prior art reference. Building on Sentair, the Board also clarified that information about an added limitation can still be material even if the prior art does not disclose the remaining limitations in a proposed substitute claim. 

Practice Tips

Thanks to the Board’s additional guidance in MasterImage 3D, patent owners are better equipped to determine which prior art references should be addressed in a motion to amend. At a minimum, patent owners should address material prior art that is currently or was previously before the Office in a Patent Office “proceeding.” Motions to Amend should also address prior art known to the patent owner that is not otherwise material but for inclusion of an additional limitation in a proposed substitute claim. 

This Newsletter is a publication of Michael Best & Friedrich LLP and is intended to provide clients and friends with information on recent legal -developments. This Newsletter should not be construed as legal advice or an opinion on specific situations. For further information, feel free to contact the authors or other members of the firm. We welcome your comments and suggestions regarding this publication. © 2015 Michael Best & Friedrich LLP. All rights reserved.



[1] Case IPR2012-00027 (PTAB June 11, 2013) (Paper 26)

[2] See 80 FR 50720, 50722-50725 (August 20, 2015)

[3] Case IPR2013-00179 (PTAB June 26, 2014) (Paper 60)

[4] Case IPR2014-00192 (PTAB June 5, 2015) (Paper 48)

[5] Case IPR2015-00040 (PTAB July 15, 2015) (Paper 42)

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