The PTAB has been hard on patent owners, with institution of a trial three times more likely than denial of a petition for IPR and cancellation of all claims four times more likely than confirmation of all claims. These statistics, and the scant instances in which the PTAB has allowed a patent owner to save claims by amendment, has led some to brand the PTAB a patent “death squad.” The recent decision in REG Synthetic Fuels LLC v. Neste Oil OYJ (IPR2014-00192) and guidance in Masterimage 3D, Inc. v. Reald Inc.(IPR2015-00040) offer a lifeline for patent owners with the suggestion that the PTAB may be changing its practice to make saving claims through amendment in an IPR a more realistic possibility.
In REG Synthetic, the PTAB granted Neste’s motion to make a substantive amendment (for only the fourth time in PTAB history), concluding that Neste had met its burden of distinguishing the substitute claims from the prior art of record. Deviating from its decision in Idle Free Systems (IPR2012-00027), the PTAB did not require Neste to establish that the substitute claims are patentable over the prior art in general—only the prior art of record. It noted that the duty of candor requires Neste to discuss any relevant prior art not of record but known to it. This guidance was repeated in Masterimage 3D.
The PTAB was not receptive to the petitioner’s argument that the motion to amend should be denied because Neste failed to address all prior art, omitting proof of patentability over certain prior art references known to it. The panel reasoned that those prior art references were in the case for other reasons and were not related to any issue newly raised by the motion to amend. The panel also noted that the petitioner did not allege that the substitute claims would be unpatentable over those prior art references.
Reducing the burden—from showing patentability over all prior art, to only showing patentability over art of record or art that the duty of candor requires the patent owner to put in the record—imposes a finite requirement that the patent owner is more likely to be able to meet. Coupled with procedural loosening, including expanding the page limit for motions to amend from 15 to 25 pages, increases the chances that claims can be saved through amendment.
Patent owners faced with an IPR should consider the signal in REG Synthetic of the PTAB’s willingness to allow amendments, which would increase their chances of surviving an IPR proceeding with valuable claims.