Spring gardening season has
begun and the USPTO is once again planting its Motion to
Amend
("MTA") seeds. In a substantial redux of Western
Digital Corporation v. Spex Technologies, IPR2018-00082,
-00084, paper 13, the PTAB this past week designated paper 15 of
Lectrosonics v. Zaxcom, IPR2018-
01129, 01130("Lectrosonics Order") as an
informative decision.
As you may recall, the PTAB explained in Western Digital that:
once a proposed claim includes amendments to address a prior art grounds in the trial, a patent owner also may include additional limitations to address potential § 101 or § 112 issues, if necessary. Allowing an amendment to address such issues, when a given claim is being amended already in view of a 35 U.S.C.§ 102 or § 103 ground, serves the public interest by helping to ensure the patentability of amended claims.
What's new in the Lectrosonics Order? A panel
consisting or acting chief administrative patent judge,
Scott Boalick, and administrative patent judges Kalyan Deshpande
and Lynne Pettigrew clarify what
constitutes impermissible enlargement in an MTA. Consistent with
longstanding reissue practice,
the PTAB makes that clear:
A patent owner may not seek to broaden a challenged claim in any respect that enlarges the scope of the claims of the patent, for example, in the name of responding to an alleged ground of unpatentability. Likewise, a proposed substitute claim may not remove a feature of the claim in a manner that broadens the scope of the claims of the challenged patent .... [A] proposed substitute claim adding a novel and nonobvious feature or combination to avoid the prior art in an instituted ground of unpatentability will not enlarge the scope of the claims of the patent.
Although patent owners are free to present proposed substitute
claims to address potential prior
art, § 101 or § 112 issues, any claim change should at
least be clarifying in nature if not presented in the
form of a clearly narrowing amendment which meets the "novel
and non-obvious feature" standard
articulated in the Lectrosonics Order. If the latter,
patent owners should remain mindful that claim features
proposed in an MTA will be construed using the same claim
construction standard that would be used to
construe the claim in a civil action under 35 U.S.C. 282(b),
including construing the claim in accordance
with (i) the ordinary and customary meanings of such claim as
understood by one of ordinary skill in the
art and (ii) the prosecution history pertaining to the patent. This
approach to claim interpretation may
prove challenging for the PTAB where proposed claim amendments have
no ordinary meaning and the
prosecution history sheds no additional light.
Despite shifting the burden of proof to petitioners, Aqua Products has not appreciably improved the
success of motions to amend. The PTAB under the direction of
Director Iancu continues to pursue a
system which provides patent owners a more robust claim amendment
opportunity. However, patent
owners will still be well served to maintain pending applications
for important patent portfolios and utilize
ex parte reexam and reissue as tools to buttress claim
scope prior to asserting a patent or seeking a
license.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.