Despite another year of attempts to amend in IPR and CBM, success is still rare. But is a change coming?
In the summer of 2015, the PTAB issued its final written decision in REG Synthetic Fuels LLC v. Neste Oil OYJ, IPR2014-00192, only the fourth substantive amendment granted since inception of the AIA post-grant procedures. Perhaps pressured by continued criticism for its seemingly unattainable bar, the PTAB in REG Synthetic seems to have shown a slight easing of its stringent requirements.
Just a year prior, in ScentAir Technologies, Inc. v. Prolitec, Inc., IPR2013-00179, the PTAB had rejected a motion to amend for failing to distinguish prior art cited on the face of the patent, but the panel in REG Synthetic Fuels came to a different conclusion. The panel distinguished ScentAir and allowed an amendment over several references from the face of the patent noted by Petitioner. The PTAB reasoned that, unlike the reference in ScentAir, the references in the REG Synthetic Fuels IPR were not alleged by the challenger to form any part of a combination of references rendering the claims obvious. Rather, these references were relevant only to the question of teaching away, which had been discussed during, and rendered moot by, the PTAB’s rejection of the original claims.
Shortly after REG Synthetic Fuels, the PTAB further clarified the requirements for motions to amend in MasterImage 3D, Inc. v. RealD Inc., Case IPR2015-00040, slip op. at 1-3 (PTAB July 15, 2015) (Paper 42). Here the PTAB explained that a Patent Owner need only argue for the patentability of the proposed substitute claims over the prior art of record, including any art provided in light of a Patent Owner’s duty of candor, and any other prior art or arguments supplied by the Petitioner. In other words, the universe of art the Patent Owner must distinguish is finite.
The decisions in REG Synthetic Fuels and MasterImage illustrate how the PTAB is trying to accommodate amendments, but neither is a big shift.
What’s more, this summer the Federal Circuit effectively gave the PTAB great freedom in its analysis over amendments. The PTAB’s reasoning for rejecting the motion to amend in ScentAir, and more generally the PTAB’s requirements for motions to amend set forth in Idle Free Systems, Inc. v. Bergstrom, Inc., IPR2012–00027 (PTAB June 11, 2013), have since been affirmed at the Federal Circuit. See Prolitec, Inc. v. ScentAir Technologies, Inc. December 4, 2015; Microsoft Corp. v. Proxyconn, Inc.
