In a Motion to Amend, the burden is on the patent owner to show patentable distinction over the prior art of record, where “prior art of record” refers to: (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.
In a Motion to Amend, the burden is on the patent owner to also show patentable distinction over prior art known to the patent owner, where “prior art known to the patent owner” refers to no more than the material prior art that Patent Owner makes of record in the current proceeding pursuant to its duty of candor and good faith to the Office under 37 C.F.R. § 42.11, in light of a Motion to Amend.
In a Motion to Amend, once the patent owner has set forth a prima facie case of patentability of narrower substitute claims over the prior art of record, the burden of production shifts to Petitioner.
Summary (Precedential) :
A conference call was held to discuss Patent Owner RealD Inc.’s intent to file a Motion to Amend, pursuant to 37 C.F.R. § 42.121(a). In connection with that request, the Board stated that, in a Motion to Amend, a patent owner still should follow all requirements articulated in Idle Free Systems, Inc. v. Bergstrom, Inc., IPR2012-00027 (June 11, 2013) (Paper 26) (informative). The Board cautioned waiting two business day prior to filing the motion to hold the conference call, recommending at least 10 business days.
Additionally, the Board set forth the three points of clarification regarding the following statement in Idle Free: “The burden is not on the petitioner to show unpatentability, but on the patent owner to show patentable distinction over the prior art of record and also prior art known to the patent owner.” The three points of clarification made by the Board are set forth above as Takeaway (1) – (3).
With regard to the second point of clarification, the Board additionally stated that, in connection with a proposed substitute claim, the initial focus is on the added limitations themselves and so the Patent Owner should also place initial emphasis on the added limitations when considering the duty of candor and good faith. Information about added limitation can be material even if it does not include all the remaining claim limitations.
With regard to the third point of clarification, the Board additionally stated that, the Petitioner may respond (a response to which the patent owner may reply) by explaining why Patent Owner did not make out a prima facie case of patentability, or attempting to rebut that prima facie case, addressing Patent Owner’s evidence and arguments and/or by identifying and applying additional prior art against proposed substitute claims. The ultimate burden of persuasion remains with Patent Owner, the movant, to demonstrate the patentability of the amended claims.