Due to the high institution and claim cancellation rates since their inception in 2012, AIA post-grant proceedings have been viewed by many as favoring petitioners over patent owners. Though the playing field seems to be leveling somewhat more recently, petitioners overall continue to see better results than patent owners at the PTAB.
Some patent owners have complained of the difficulty of amending claims in AIA proceedings. Thousands of claims have been canceled, but this earlier this week the Board granted just its sixth motion to amend allowing substitute claims, in Shinn Fu Company of America and Shinn Fu Corp. v. The Tire Hanger Corp., IPR2015-00208, Paper 24 (Apr. 22, 2016). The difficulty to amend stems, in part, from the requirement to “persuade the Board that the proposed substitute claim is patentable over the prior art of record, and over prior art not of record but known to the patent owner.” Nike Inc. v. Adidas AG, 812 F.3d 1326, 1350 (Fed. Cir. 2016) (citing Idle Free Sys., Inc. v. Bergstrom, IPR2012-00027, 2013 WL 5947697 (PTAB June 11, 2013).)
Satisfying this requirement in 15 pages under the old rules, and even 25 pages under the new rules, 37 C.F.R. § 42.24, can be a formidable challenge, especially if the patent has a lengthy history with many references cited against the claims. In fact, in its pending appeal to the Supreme Court, Cuozzo Speed Technologies, LLC v. Lee, No. 15-446, Cuozzo cites this lack of a “robust right to amend” as one of the reasons that the broadest reasonable interpretation standard for claim construction should not apply in IPR.
In granting Tire Hanger’s motion to amend, the Board approved a tool that patent owners may be able to use to more efficiently show the substitute claims are patentable over the prior art of record and not of record within the allotted pages—“grouping prior art references together according to their particular teachings” and “discussing only a representative few in its Motion to Amend.” Paper 24 at 19, 20.
Shinn Fu had faulted Tire Hanger’s motion to amend for “failing to discuss [prior art] Conrad, either alone or in combination with [prior art] Komorita.” Paper 24 at 20. According to Shinn Fu, by taking this shortcut, Tire Hanger’s motion “fail[ed] to address th[is] relevant prior art known to Tire Hanger.” Paper 24 at 20. Tire Hanger felt that it had properly grouped and discussed references representative of Conrad and Komorita. Paper 24 at 20-21.
The Board disagreed with Shinn Fu, finding that “[t]here is . . . no requirement that a patent owner analyze expressly every individual reference cited during prosecution of the challenged patent, particularly where, as here, there are many different permutations of the cited prior art.” Paper 24 at 20. The Board found it acceptable to “group 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.” Paper 24 at 19-20. The Board found that Tire Hanger met its burden by “discussing only a representative few [references] in its Motion to Amend,” “[g]iven the duplicative nature of [the] references.” Paper 24 at 20.
By using Tire Hanger’s grouping approach, a patent owner can cover more ground in less space in a motion to amend while still meeting its burden to show patentability over prior art. It will be interesting to see whether other patent owners follow Tire Hanger’s lead, and whether this approach will translate to more grants of motions to amend to help tip the balance of favorable results toward patent owners.