PTAB Updates Amendment Precedent

Today, the Patent Trial & Appeal Board (PTAB) designated Lectrosonics, Inc. v. Zaxcom, Inc, (IPR2018-01129, 01130, Paper 15 (Feb. 25, 2019) precedential as to the agency’s interpretation of 35 U.S.C § 316(d), amendment requirements and burden.

The Order provides guidance and information regarding statutory and regulatory requirements for a motion to amend in light of Federal Circuit case law. Specifically, the order sets forth guidance, such as: (1) contingent motions to amend; (2) the burden of persuasion that the Office applies when considering the patentability of substitute claims; (3) the requirement that a patent owner propose a reasonable number of substitute claims; (4) the requirement that the amendment respond to a ground of unpatentability involved in the trial; (5) the scope of the proposed substitute claims; (6) the requirement that a patent owner provide a claim listing with its motion to amend; (7) the default page limits that apply to motion to amend briefing; and (8) the duty of candor. This decision replaces Western Digital Corp. v. SPEX Techs., Inc., (IPR2018-00082, -00084) (PTAB April 25, 2018) (Paper 13).

The only significant change in Lectrosonics as compared to Spex is language clarifying the right of petitioner to submit evidence during the amendment briefing cycle:

" A petitioner may submit additional testimony and evidence with an opposition to the motion to amend, and a patent owner may do likewise with a reply. Generally, a reply or sur-reply may only respond to arguments raised in the preceding brief. A petitioner’s sur-reply may not be accompanied by new evidence other than deposition transcripts of the cross-examination of any reply witness. A petitioner’s sur-reply should only respond to arguments made in a reply, comment on reply declaration testimony, or point to cross examination testimony.

(internal citations omitted)

The Office is currently working on finalizing its earlier proposed amendment pilot program, this appears to be laying the final groundwork for that roll out.

Scott A. McKeown is an author of the Patents Post Grant