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In
view of the decision from the United States Court of Appeals for the Federal
Circuit in Aqua Products, Inc. v. Matal, 872 F.3d 1290 (Fed. Cir. 2017),
regarding motion to amend practice and procedure in AIA trials, PTAB has
de-designated as precedential MasterImage 3D, Inc. v. RealD Inc., Case
IPR2015-00040 (PTAB July 15, 2015) (Paper
42) and has de-designated as informative Idle Free Sys., Inc. v. Bergstrom,
Inc., Case IPR2012-00027 (June 11, 2013) (Paper 26). Both decisions
have been removed from PTAB’s Precedential and Informative Decisions web
page.
Concurrently,
PTAB has designated as informative the following order in Western Digital Corp. v. SPEX
Techs., Inc., which provides guidance on motion to amend practice in
AIA trials.
Western Digital Corp. v. SPEX Techs.,
Inc., Case IPR2018-00082, -00084 (PTAB Apr.
25, 2018) (Paper 13).
This order provides
guidance and information regarding statutory and regulatory requirements for a
motion to amend in light of Federal Circuit case law, as well as the
de-designation of MasterImage as precedential and Idle Free as
informative at the Board. Specifically, the order sets forth
guidance, such as: (1) contingent motions to amend; (2) the burden of
persuasion that the Office applies when considering the patentability of
substitute claims; (3) the requirement that a patent owner propose a reasonable
number of substitute claims; (4) the requirement that the amendment respond to
a ground of unpatentability involved in the trial; (5) the scope of the
proposed substitute claims; (6) the requirement that a patent owner provide a
claim listing with its motion to amend; (7) the default page limits that apply
to motion to amend briefing; and (8) the duty of candor.
A
copy of the informative order can be found on the PTAB’s Precedential and Informative Decisions web page.
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