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

Click Here For Copy of Decision

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:

  • Reasonable Number of Substitute Claims:  In a motion to amend proposing substitute claims, a patent owner may propose “a reasonable number of substitute claims for each challenged claim,” and there is a rebuttable presumption that the reasonable number is one substitute claim per challenged claim (one-to-one correspondence).   35 U.S.C. § 316(d)(1)(B), 37 C.F.R. § 42.121(a)(3).  A patent owner presenting more than one substitute claim for a challenged claim must rebut the presumption by demonstrating a need.  “[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.”  Furthermore, “the motion should, for each proposed substitute claim, specifically identify the challenged claim that it is intended to replace.” 
  • Amendment Must Respond to a Ground of Unpatentability Involved in the Trial:  A motion to amend as to a particular claim may be denied to the extent the proposed amendment to the claim does not respond to the ground(s) of unpatentability. 37 C.F.R. § 42.121(a)(2)(i).  In considering the motion, the Board reviews the entirety of the record to determine whether a patent owner’s amendment responds to the ground(s) of unpatentability applicable to the claim.  However, so long as a proposed amendment addresses the ground(s) of unpatentability based on prior art in the trial, “a patent owner also may include additional limitations to address potential § 101 or § 112 issues, if necessary,” which “help[s] to ensure the patentability of amended claims.” 
  • Amendment May Not Enlarge the Claim Scope:  A patent owner is prohibited from broadening a challenged claim through amendment in any respect, such as by removing a feature of the claim.  See 35 U.S.C. § 316(d)(3).  “Rather, a proper substitute claim under § 42.121(a)(2)(i) must narrow the scope of the challenged claim it replaces in a way that is responsive to a ground of unpatentability involved in the trial. For example, a proposed substitute claim adding a novel and nonobvious feature or combination to avoid the prior art in an instituted ground of unpatentability will narrow the scope of the claim.” 
  • Amendment Must Be Supported by Original Disclosure (No New Matter):  A motion to amend must “set forth written description support in the originally filed disclosure of the subject patent for each proposed substitute claim, and also set forth the support in an earlier-filed disclosure for each claim for which benefit of the filing date of the earlier filed disclosure is sought.” See 37 C.F.R. §§ 42.121(b)(1), 42.121(b)(2). Procedurally, “[i]f a petitioner, in an opposition to a motion to amend, raises an issue of priority of a proposed substitute claim, for example, based on art identified in the opposition, the patent owner may respond in a reply to the opposition.”  A patent owner should cite the original disclosure(s) of the application(s), as filed, rather than to the patent as issued.  “The motion to amend itself, not the claim listing (discussed below), must set forth the written description support. . .  In addition, the 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.” 
  • Patent Owner Must Include a Claim Listing That Lists Any Claim With a Changed Scope:  A patent owner must include a claim listing, reproducing each proposed substitute claim, see 37 C.F.R. § 42.121(b).  “Any claim with a changed scope, subsequent to the amendment, should be included in the claim listing as a proposed substitute claim, and have a new claim number. This includes any dependent claim a patent owner intends as depending from a proposed substitute independent claim. For each proposed substitute claim, the motion must show clearly the changes in the proposed substitute claim with respect to the original patent claim that it is intended to replace. No particular form is required, but use of brackets to indicate deleted text and underlining to indicate inserted text is suggested. The claim listing may be filed as an appendix to the motion to amend, and shall not count toward the page limit for the motion. The appendix, however, shall not contain any substantive briefing. All arguments and evidence in support of the motion to amend shall be in the motion itself.” 
  • Default Page Limits:  “The page limits set forth in the rules apply. A motion to amend, as well as any opposition to the motion, is limited to twenty-five pages. See 37 C.F.R. §§ 42.24(a)(1)(vi), (b)(3). A patent owner’s reply is limited to twelve pages. See 37 C.F.R. § 42.24(c)(3). The parties may contact the Board to request additional pages or briefing.” 
  • Duty of Candor Applies to All Parties: “Under 37 C.F.R. § 42.11, all parties have a duty of candor, which 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. When considering the duty of candor in connection with a proposed amendment, a patent owner should consider each added limitation. Information about an added limitation may be material even if it does not include the rest of the claim limitations. 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. Cf. 37 C.F.R. § 42.51(b)(iii). For example, such information could include objective evidence of non-obviousness of proposed substitute claims, if a petitioner is aware of such evidence and it is not already of record in the case.” 
  • Other information can be found in the Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,766–67 (Aug. 14, 2012).
Clint Conner

Clint Conner

Clint’s practice focuses on intellectual property with an emphasis on patent litigation, inter partes reviews, and patent enforcement strategies. Although he has remained focused on U.S. intellectual property law throughout his career, he brings an international perspective, having spent nearly five years representing companies in U.S. patent litigation while living and working in Tokyo. Before attending law school, Clint was an engineer for three years with Lucent Technologies’ Bell Labs (now Alcatel-Lucent).