On March 7, 2019, the Patent Trial and Appeal Board (PTAB) designated the decision in Lectrosonics, Inc. v. Zaxcom as precedential. The order provides guidance and information on practice surrounding a patent owner’s motion to amend during an Inter Partes Review (IPR), in light of Federal Circuit case law. Generally, in an IPR proceeding, the patent owner may file one motion to amend the patent to (a) cancel any challenged patent claim and (b) for each challenged claim, propose a reasonable number of substitute claims. 35 USC 316(d)(1). This decision replaces Western Digital Corp. v. SPEX Techs, Inc., and provides further guidance on the scope of proposed substitute claims and the right of a petitioner to submit evidence during the IPR amendment cycle.
In particular, the PTAB makes clear that a substitute claim proposed in a motion to amend will meet statutory claim scope requirements “if [the substitute claim] narrows the scope of at least one claim of the patent…in a way that is responsive to a ground of unpatentability involved in the [IPR] trial.” Lectrosonics at 5–6. With respect to evidence submitted by a petitioner, Lectrosonics states that a petitioner may submit additional testimony and evidence with an opposition to a motion to amend. Id. at 9. Further, in a sur-reply, the petitioner may not submit new evidence other than deposition transcripts of a cross-examination of any reply witness and should only respond to arguments made in a patent owner’s reply, comment on reply declaration testimony, or point to cross-examination testimony. Id. The decision also discusses, without change from the Western Digital decision, additional statutory and regulatory requirements, such as contingent motions to amend, the burden of persuasion applied by the Patent Office in considering patentability of substitute claims, and the duty of candor.