The Patent Trial and Appeal Board (PTAB) designated as precedential four decisions addressing America Invents Act proceedings and issues of live testimony at oral argument and motions to amend under 35 USC § 316(d)., Inc. v. Uniloc Luxembourg S.A., Case No. IPR2017-00948, Paper 34 (PTAB Jan. 18, 2019) (designated Mar. 18, 2019); DePuy Synthes Prods., Inc. v. Medidea, L.L.C., Case No. IPR2018-00315, Paper 29 (PTAB Jan. 23, 2019) (designated Mar. 18, 2019); K-40 Elecs., LLC v. Escort, Inc., Case No. IPR2013-00203, Paper 34 (PTAB May 21, 2014) (designated Mar. 18, 2019); Lectrosonics, Inc. v. Zaxcom, Inc., Case No. IPR2018-01129, 01130, Paper 15 (PTAB Feb. 25, 2019) (designated Mar. 7, 2019).

DePuy Synthes Prods., Inc. v. Medidea, L.L.C.

The PTAB designated as precedential a decision denying a patent owner’s request to allow the inventor of the challenged patent to address the panel at oral hearing because the inventor had not provided any declaration in the proceeding and was not a counsel of record. Under the PTAB Trial Practice Guide, a party may rely upon evidence that has been previously submitted in the proceeding and may only present arguments relied upon in the papers previously submitted, and no new evidence or arguments may be presented at the oral argument. Because the inventor’s testimony would not have been based on previously submitted evidence, such as an inventor declaration, the inventor was not permitted to testify at the oral hearing.

K-40 Elecs., LLC v. Escort, Inc.

The PTAB designated as precedential an order granting a patent owner’s motion to present live testimony from its named inventor at the final oral argument. The PTAB noted that although it does not envision that live testimony will be necessary at many oral arguments, “under very limited circumstances, cross-examination of witnesses may be ordered to take place in the presence of an administrative patent judge,” such as “where the Board considers the demeanor of a witness critical to assessing credibility.” Rather than establishing a de facto or per se rule permitting live testimony in all disputes, the PTAB found that live testimony is necessary only in limited circumstances, so the PTAB will approach requests for live testimony on a case-by-case basis. The factors to be considered may include the importance of the witness’s testimony to the case, i.e., whether it may be case-dispositive, and whether the witness is a fact witness, since the credibility of experts often turns less on demeanor and more on the plausibility of their theories. The PTAB also cautioned that granting requests for live testimony was still exceptional., Inc. v. Uniloc Luxembourg S.A.

The PTAB designated as precedential a decision finding that 35 USC § 101 is a potential ground for denying proposed amended claims in an inter partes review. The PTAB found that the US Court of Appeals for the Federal Circuit’s decision in Aqua Products (IP Update, Vol. 19, No. 8) clarified that the patent owner does not bear the burden of persuasion on issues of patentability in a motion to amend, and found that Ariosa Diagnostic (IP Update, Vol. 19, No. 8) noted that the burden to show patentability of amended claims requires the patent owner to address § 101. The PTAB found that neither case prevents it from considering the patentability of amended claims under non-prior-art-based statutory provisions such as § 101.

Specifically, § 311(b) limits a petitioner to requesting cancellation of “1 or more [existing] claims of a patent” under § 102 and § 103, but does not limit the grounds of unpatentability that can be raised in response to proposed substitute amended claims presented in a motion to amend. 35 USC § 316(d) provides a patent owner the right to file a motion to amend, but does not prevent the PTAB from considering unpatentability under sections other than § 102 and § 103 with respect to substitute claims. Amended claims are only proposed claims until they are added following a final written decision and action of the director.

The PTAB has previously relied on provisions other than § 102 and § 103, such as 35 USC § 112 paragraphs 1 and 2, to evaluate amended claims for unpatentability and to find proposed substitute claims unpatentable as being indefinite or lacking written support. The PTAB recognized that § 101 issues can be introduced and corrected through a motion to amend and that Aqua Products did not divest the PTAB of the power to consider a § 101 challenge to proposed amended claims. The PTAB further found that under Aqua Products, the PTAB must “consider the entirety of the record before it when assessing the patentability of amended claims under § 318(a) and must justify any conclusions of unpatentability with respect to amended claims based on that record,” and also must “assess the patentability of all claims in the proceeding, including amended claims that have been entered into the proceeding after satisfying the requirements outlined in § 316(d), and must do so through the lens of § 316(e).”

Lectrosonics, Inc. v. Zaxcom, Inc.

The PTAB designated as precedential an order that provides the following general guidance regarding motions to amend.

1. Motions to amend may be contingent.

A motion to amend claims may cancel claims and/or propose substitute claims under 35 USC § 316(d)(1) and 37 CFR § 42.121(a)(3). A request to cancel claims will not be regarded as contingent, but a request to substitute claims ordinarily will be. Proposed substitute claim(s) will normally be considered only if a preponderance of the evidence establishes that the original patent claim that it replaces is unpatentable. The patent owner should specify the contingency of substitution on a claim-by-claim basis.

2. Burden of persuasion lies with petitioner.

The patent owner does not bear the burden of persuasion to demonstrate the patentability of substitute claims. Rather, petitioner must show that any proposed substitute claims are unpatentable by a preponderance of the evidence. The PTAB may also justify any finding of unpatentability by reference to evidence of record in the proceeding. The PTAB determines whether substitute claims are unpatentable based on the entirety of the record, including any opposition made by the petitioner, after determining whether the motion to amend meets the statutory and regulatory requirements of 35 USC § 316(d) and 37 CFR § 42.121.

3. Rebuttable presumption of one substitute claim per challenged claim.

Patent owner may rebut the presumption that a reasonable number of substitute claims per challenged claim is one substitute claim by demonstrating a need to present more than one substitute claim per challenged claim. The determination of whether the number of proposed substitute claims is reasonable is made on a claim-by-claim basis. The motion should, for each proposed substitute claim, specifically identify the original challenged claim that it is intended to replace.

4. Proposed claims must respond to an instituted ground of unpatentability.

Under 37 CFR § 42.121(a)(2)(i), “[a] motion to amend may be denied where . . . [t]he amendment does not respond to a ground of unpatentability involved in the trial.” The PTAB reviews the entirety of the record to determine whether a patent owner’s amendments respond to a ground of unpatentability involved in the trial. A proposed claim amended to address a prior art ground in the trial may also include additional limitations to address potential § 101 or § 112 issues, if necessary. Allowing such amendment, when a given claim is being amended already in view of a 35 USC § 102 or § 103 ground, serves the public interest by helping to ensure the patentability of amended claims, and helps ensure a “just” resolution of the proceeding and fairness to all parties. 37 CFR § 42.1(b).

5. Motion to amend may not enlarge the scope of the claims or introduce new subject matter.

A motion to amend may not present substitute claims that enlarge the scope of the claims of the challenged patent or introduce new subject matter, even in responding to an alleged ground of unpatentability. A proposed substitute claim may not remove a feature of the claim in a manner that broadens the scope of the claims of the challenged patent. A substitute claim will meet the requirements if it 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 trial. A proposed substitute claim adding a novel and non-obvious feature or combination to avoid the prior art in an instituted ground of unpatentability will not enlarge the scope of the claims of the patent.

To avoid rejection under 35 USC § 112, a motion to amend must set forth written description support in the originally filed disclosure of the subject patent for each proposed substitute claim, and also must set forth support in an earlier-filed disclosure for each claim for which benefit of the filing date of the earlier filed disclosure is sought. The motion must also set forth written description support for each proposed substitute claim as a whole, and not just the features added by the amendment. If petitioner raises an issue of priority of a proposed substitute claim (e.g., based on art identified in the opposition), the patent owner may respond in a reply to the opposition.

6. Claim listing is required.

A motion to amend must include a claim listing reproducing each proposed substitute claim. Any claim with a changed scope subsequent to the amendment should be included in the claim listing as a proposed substitute claim, and should have a new claim number. The motion must show clearly the changes in each proposed substitute claim with respect to the original patent claim that it is intended to replace. Use of brackets to indicate deleted text and underlining to indicate inserted text is strongly suggested.

The claim listing may be filed as an appendix to the motion to amend, and shall not count toward the page limit for the motion, but shall not contain any substantive briefing. All arguments and evidence in support of the motion to amend shall be in the motion itself.

7. Page limitations and permissible evidence.

A motion to amend, as well as any opposition to the motion, is limited to 25 pages. A patent owner’s reply is limited to 12 pages. A petitioner’s sur-reply is limited to 12 pages. The parties may contact the PTAB to request additional pages or briefing.

Additional testimony and evidence may be submitted with an opposition to the motion to amend and with a reply. A reply or sur-reply may only respond to arguments raised in the preceding brief. Petitioner’s sur-reply should only respond to arguments made in a reply, comment on reply declaration testimony, or point to cross-examination testimony, and may not be accompanied by new evidence other than deposition transcripts of the cross-examination of any reply witness. Deadlines for submitting any motion to amend and responsive briefing may be stipulated by the parties, to the extent permitted by the instructions set forth in the scheduling order.

8. All parties have a duty of candor.

Under 37 CFR § 42.11, all parties have a duty of candor. Patent owner has a duty to disclose to the PTAB information of which the patent owner is aware that is material to the patentability of substitute claims (for each added limitation) if such information is not already of record in the case. Information about an added limitation may be material even if it does not include the rest of the claim limitations.

A petitioner has a duty of candor relative to relevant information that is inconsistent with a position advanced by the petitioner during the proceeding. Such information could include objective evidence of non-obviousness of proposed substitute claims, if a petitioner is aware that such evidence is inconsistent with a position it has advanced during the proceeding and the evidence is not already of record in the case.