On June 1, 2018, the Patent Trial and Appeal Board (“PTAB” or “Board”) designated as “informative” an April 25, 2018 order from Western Digital Corp. v. SPEX Technologies, Inc., IPR2018-00082 and IPR2018-00084 (Paper 13). Although not precedential, the order provides guidance concerning the Board’s treatment of motions to amend patent claims challenged in inter partes review (“IPR”) proceedings after Aqua Products, Inc. v. Matal, 872 F.3d 1290 (Fed. Cir. 2017), an October 2017 decision in which the en banc Federal Circuit held that a patent owner in an IPR proceeding does not bear the burden of demonstrating the patentability of substitute claims presented in a motion to amend.

According to the Western Digital order:

1. The Board will “ordinarily treat a request to substitute claims as contingent. That means a proposed substitute claim normally will be considered only if a preponderance of the evidence establishes that the original patent claim it replaces is unpatentable.”

2. “[T]he burden of persuasion will ordinarily lie with the petitioner to show that any proposed substitute claims are unpatentable by a preponderance of the evidence” and “the Board determines whether substitute claims are unpatentable by a preponderance of the evidence based on the entirety of the record, including anyopposition  made by the petitioner.”

3. 37 C.F.R. § 42.121(a)(3) establishes a rebuttable presumption that a reasonable number of substitute claims per challenged claim is one substitute claim. “[T]o the extent a patent owner seeks to propose more than one substitute claim for each cancelled claim, the patent owner should explain in the motion to amend the need for the additional claims and why the number of proposed substitute claims is reasonable.”

4. “[O]nce a proposed claim includes amendments to address a prior art ground in the trial, a patent owner also may include additional limitations to address potential § 101 or § 112 issues, if necessary.”

5. “A motion to amend may not present substitute claims that enlarge the scope of the claims of the challenged patent or introduce new subject matter.” “[T]he motion must set forth written description support for each proposed substitute claim as a whole, and not just the features added by the amendment. This applies equally to independent claims and dependent claims, even if the only amendment to the dependent claims is in the identification of the claim from which it depends.”

6. While a claim listing reproducing each proposed substitute claim is required by 37 C.F.R. § 42.121(b), “[t]he claim listing may be filed as an appendix to the motion to amend, and shall not count toward the page limit for the motion.”

7. A motion to amend and any opposition to the motion are limited by default to twenty-five pages, though the parties may contact the Board to request additional pages.

8. Both parties owe a duty of candor to the Board in connection with motions to amend. That “includes a patent owner’s duty to disclose to the Board information of which the patent owner is aware that is material to the patentability of substitute claims, if such information is not already of record in the case….Likewise, a petitioner should keep in mind that it has a duty of candor in relation to relevant information that is inconsistent with a position advanced by the petitioner during the proceeding.”

The full order is available here.

Christopher Loh has extensive experience counseling clients and litigating matters involving biotechnology and life sciences, including in the areas of antibody biosimilars, targeted cancer therapies, diabetes treatments and siRNA technologies. Christopher has a B.S. in Molecular Biochemistry and Biophysics and in Economics from Yale University.


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