Western Digital Corp. v. SPEX Techs., Inc., Case IPR2018-00082, -00084 (Apr. 25, 2018) (Paper 13)

Takeaway (1) (Informative): A motion to amend that proposes substitute claims (versus a motion to amend that simply cancels claims) will ordinarily be treated as contingent, meaning that the Board will normally consider a proposed substitute claim only if a preponderance of the evidence establishes that the patent claim it replaces is unpatentable.  “A patent owner should adopt a claim-by-claim approach to specifying the contingency of substitution, e.g., which claim for which claim and in what circumstance.”

Takeaway (2) (Informative): Petitioners have the burden of persuasion to show that any proposed substitute claim is unpatentable by a preponderance of the evidence. The Board itself also may justify a finding of unpatentability by reference to evidence of record in the proceeding, as it must do when a petitioner ceases to participate.  “Thus, the Board determines whether substitute claims are unpatentable by a preponderance of the evidence based on the entirety of the record, including any opposition made by the petitioner.”

Takeaway (3) (Informative): Before considering the patentability of any substitute claims, the Board first must determine whether the motion to amend meets the statutory and regulatory requirements set forth in 35 U.S.C. § 316(d) and 37 C.F.R. § 42.121: