On April 22, 2016, the PTAB granted a motion to amend for only the sixth time since institution of the AIA in its decision of Shinn Fu Company of America, Inc., et al. vs. The Time Hanger Corporation (IPR2015-00208, Paper 24). The patent at issue relates to “a method of handling a wheel of a motor vehicle while the vehicle is elevated on a hydraulic lift or hoist for repair by a service technician.” (Id. at 3.) The five challenged claims included one independent claim having five steps:

  1. A method for temporarily retaining a vehicle wheel, comprising the steps of:
    1. elevating a vehicle on an automotive hoist to that a support arm disposed on the hoist is at about the same height as a wheel of the vehicle;
    2. removing the wheel from the vehicle;
    3. placing the wheel on the support arm;
    4. removing the wheel from the support arm substantially without bending over; and
    5. reinstalling the wheel onto the vehicle.

In response to the Board’s institution decision, the patent owner conceded unpatentability of the original claims by filing only a contingent motion to amend and no patent owner response. The proposed substitute independent claim (claim 6) set forth in the motion to amend included essentially the same five steps as original claim 1, but added greater detail to several of the steps. (Id. at. 4.) “Most notably, rather than simply ‘placing’ the wheel on the support arm, the third step provided for (a) carrying the wheel to the support arm, and (b) hanging the wheel on the support arm.” (Id.)

In its Final Written Decision, the PTAB held that the proposed substitute claims were not obvious over the known prior art, even though each of the individual steps of the method were admittedly disclosed in the prior art. In rendering its decision, the PTAB recognized that the substitute claims recite a “seemingly simple” invention. (Id. at 26.) Nonetheless, the Board expressly declined “to engage in a patchwork effort to arrive at the combination of steps called for by the substitute claims 6-11,” and concluded that there was no justification for modifying the prior art. (Id.)

In rendering its decision, the Board made a noteworthy observation about the grouping of prior art references that should be considered when preparing a contingent motion to amend. The petitioner opposed the motion to amend based in part on the patent owner’s failure to distinguish the proposed substitute claims from relevant prior art that was cited on the face of the patent and thus clearly known to the patent owner. In response, the Board concluded that there is “no requirement that a patent owner analyze expressly every individual reference cited during prosecution of the challenged patent, particular where, as here, there are many different permutations of the cited prior art. 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 pp. 19-20.) This is worth keeping in mind when considering a contingent motion to amend that must address numerous known prior art references, as is often the case for patents involved in co-pending district court litigation.