In Western Digital Corp v. SPEX Tech, the PTAB provides guidance on motion to amend practice in inter partes review (IPR) proceedings at the Patent Trial and Appeal Board (PTAB). IPR2018-00082, Paper 13 (PTAB Apr. 25, 2018). Western Digital provides important guidance in view of the Federal Circuit’s en banc decision in Aqua Products, Inc. v. Matal, 872 F.3d 1290 (Fed. Cir. 2017), which held that the petitioner bears the burden of persuasion to demonstrate the unpatentability of substitute claims presented in a motion to amend.

In view of Aqua Products, the PTAB de-designated as precedential MasterImage 3D, Inc. v. RealD Inc., Case IPR2015-00040, Paper 42 (PTAB July 15, 2015) and de-designated as informative Idle Free Sys., Inc. v. Bergstrom, Inc., Case IPR2012-00027, Paper 26 (June 11, 2013). MasterImage and Idle Free have been removed from the PTAB’s listing of Precedential and Informative Decisions.

The PTAB designated Western Digital as an informative decision on June 1, 2018. Western Digital sets forth guidance on several aspects of motion to amend practice, including 1) contingent motions to amend, 2) the burden of persuasion, 3) the reasonable number of substitute claims, 4) responding to a ground of unpatentability involved in the trial, 5) scope of the claims, 6) claim listing, 7) default page limits, and 8) duty of candor. These issues are discussed below.

1. Contingent Motions to Amend

Western Digital states that a request to cancel claims will not be regarded as a contingent request, but that a request to substitute claims will ordinarily be treated as a contingent request. The PTAB indicates that patent owners should specify the contingency of substitution on a claim-by-claim basis, i.e., detailing which claim for which claim and in what circumstance substitution is to occur.

2. Burden of Persuasion

Consistent with Aqua Products, Western Digital states that the burden of persuasion lies with the petitioner to show that any proposed substitute claims are unpatentable by a preponderance of the evidence. In cases where the petitioner ceases to participate, the PTAB may also justify any finding of unpatentability by reference to evidence of record.

Issues 3) to 8) listed above are associated with the statutory and regulatory requirements for motions to amend set forth in 35 U.S.C. 316(d) and § 37 C.F.R. § 42.121.

3. Reasonable Number of Substitute Claims

Western Digital indicates that a patent owner may cancel challenged claims or propose a reasonable number of substitute claims for each challenged claim. 35 U.S.C. § 316(d)(1)(B). There is a rebuttable presumption that a reasonable number of substitute claims per challenged claim is one (1) substitute claim. 37 C.F.R. § 42.121(a)(3). If a patent owner seeks to propose more than one substitute claim for each cancelled claim, the patent owner should explain in the motion to amend the need for the additional claims and why the number of proposed substitute claims is reasonable. The PTAB makes the determination of whether the number of proposed substitute claims is reasonable on a claim-by-claim basis. The patent owner’s motion should specifically identify the challenged claim that the substitute claim is intended to replace.

4. Respond to a Ground of Unpatentability Involved in the Trial

Western Digital provides that a motion to amend can be denied if the motion does not respond to a ground of unpatentability (Issue 4). The PTAB will review “the entirety of the record” to determine whether a patent owner’s amendments respond to a ground of unpatentability involved in the trial.

Importantly, the PTAB indicates that the rule does not require “that every word added to or removed from a claim in a motion to amend be solely for the purpose of overcoming an instituted ground.” As an example, modifications that address potential § 101 or § 112 issues are not precluded. “[O]nce a proposed claim includes amendments to address a prior art ground in the trial, a patent owner also may include additional limitations to address potential § 101 or § 112 issues, if necessary.”

In addition, the amendment cannot enlarge the scope of the claims of the patent in any respect. For example, the proposed substitute claim can narrow the scope of the challenged claim by adding a novel and nonobvious element.

5. Scope of the Claims

The motion to amend must set forth written description support in the originally filed disclosure of the subject patent for each proposed substitute claim. The motion must set forth the support in an earlier-filed disclosure for each claim for which benefit of the filing date of the earlier filed disclosure is sought.

6. Claim Listing

The motion to amend must include a claim listing which reproduces each proposed substitute claim. 37 C.F.R. § 42.121(b). The PTAB suggests that changes in the proposed substitute claim with respect to the original claim be shown using brackets to indicate deleted text and underlining to indicate inserted text. The PTAB adds that the claim listing can be filed as an appendix (which does not count towards the page limit) but cannot contain any substantive briefing if it is included in the appendix.

7. Default Page Limits

Under 37 C.F.R. § 42.24, a motion to amend is limited to twenty-five pages, and a patent owner reply to a petitioner’s opposition is limited to twelve pages.

Importantly, a petitioner’s opposition to the motion to amend can include additional testimony and evidence, which is also true for the patent owner’s reply.

8. Duty of Candor

Under 37 C.F.R. § 42.11, the patent owner has the duty to disclose to the Board information of which the patent owner is aware that is material to the patentability of substitute claims, if such information is not already of record in the case. Western Digital states that when considering the duty of candor in connection with a proposed amendment, a patent owner should consider “each added limitation,” noting that “[i]nformation about an added limitation may be material even if it does not include the rest of the claim limitations.” The petitioner is required to submit relevant information that is inconsistent with a position advanced by the petitioner during the proceeding.

In the wake of Aqua Products, the PTAB’s informative decision in Western Digital provides welcome guidance regarding motions to amend practice in AIA trial proceedings. The decision can be found here.