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The Patent Trial and Appeal Board (“the PTAB”) has a staunch reputation for rarely granting a patent owner’s motion to amend claims during inter partes review proceedings (to date, the Board has only granted six such motions to amend). However, in the matter of Shinn Fu Co. v. Tire Hanger Corp., IPR2015-00208 (decided on April 22, 2016), the PTAB granted The Tire Hanger Corporation’s (“Tire Hanger”) motion to amend the claims of its U.S. Patent No. 6,681,897 (“the ‘897 patent”). The PTAB’s decision allowed Tire Hanger to salvage invalid claims with narrowing claim amendments and provides encouragement to patent owners that more motions to amend may be granted by the PTAB in the future.

A patent owner’s right to file one motion to amend the claims during inter partes review is guaranteed by statute (35 U.S.C. § 316(d)). This right to amend helps justify the application of the lower broadest reasonable interpretation standard for claim construction during inter partes review. However, as a practical matter, motions to amend are rarely granted by the PTAB, and the burdens placed on the patent owner by the PTAB to obtain entry of a reasonable number of substitute claims are difficult to meet. For instance:

  1. The proposed substitute claims must not enlarge the scope of the invention;
  2. The proposed substitute claims must be supported by the original specification;
  3. The patent owner bears the burden of establishing patentability of the proposed substitute claims over the prior art by a preponderance of the evidence. See e.g., 35 U.S.C. § 316(d); 37 C.F.R. § 42.121(b); and Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1307–08 (Fed. Cir. 2015).

Rather than filing a Patent Owner Response, Tire Hanger instead responded to Shinn Fu’s petition by filing a contingent motion to amend the claims. In its Reply, the Petitioner Shinn Fu argued that Tire Hanger had failed to meet its burden of establishing the patentability of the proposed substitute claims over the prior art because Tire Hanger had failed to expressly address some of the prior art references. However, the PTAB disagreed with Shinn Fu, and instead found that, although Tire Hanger’s motion to amend did not address some of the references per se, it did argue for patentability over substantially similar prior art references. Given the duplicative nature of the references, the PTAB did not fault Tire Hanger for “discussing only a representative few in its Motion to Amend” and, as such, found that “Tire Hanger has complied with its duty of candor in addressing the relevant prior art” as 37 C.F.R. § 42.11 stipulates. Id. at 20. In short, the PTAB found that “[a] patent owner meets its duty of candor and good faith by grouping prior art references together according to their particular teachings without having to make a presentation on each and every reference giving rise to that same teaching.” Id. at 19-20.

Shinn Fu Co. v. Tire Hanger Corp. offers encouragement to patent owners that although successful motions to amend are rare, going forward, the PTAB may actually be willing to grant motions to amend, provided that the patent owner meets the PTAB’s strict requirements.