Written by Nathanael Luman, Ph.D. and Kerry S. Taylor, Ph.D.

The PTAB granted-in-part motions to amend in three related proceedings: Activision Blizzard, Inc. v. Acceleration Bay, LLC, IPR2015-01953, Paper 107 (P.T.A.B. sealed on March 23, 2017, made public on April 19, 2017); IPR2015-01972, Paper 111 (P.T.A.B. sealed on March 23, 2017, made public on April 19, 2017); IPR2015-01996, Paper 101 (P.T.A.B. sealed on March 29, 2017, made public on April 19, 2017).

Activision filed six IPR petitions challenging three of Acceleration Bay’s patents directed to broadcasting techniques for communications networks. See IPR2015-01951, -01953, -01964, -01970, -01972, and -01996. The PTAB instituted the six IPR proceedings. In each proceeding, Acceleration Bay filed a contingent motion to amend containing three proposed substitute claims. In three proceedings, IPR2015-01951, -01964, and 01970, the PTAB ruled that the motion to amend was moot because Activision had not shown that the original claims were unpatentable. In the other three proceedings, IPR2015-01953, -01972, and -01996, the PTAB granted-in-part the motions to amend.

In IPR2015-01953 and -01972, the PTAB determined that two of the three proposed claims were unpatentable. In IPR2015-01996, the PTAB determined that one proposed claim was unpatentable, and another proposed claim was moot because the petitioner had not shown the original claim was unpatentable. In all three proceedings, one proposed claim included a limitation allowing participants to “join and leave the network using the broadcast channel.” The PTAB found the prior art did not teach or suggest this limitation. The PTAB therefore granted-in-part the motions to amend with respect to the substitute claim allowing participants to join and leave using the broadcast channel.

The PTAB rarely grants motions to amend. According to PTAB statistics published last April, the PTAB granted just 5% of motions to amend. See USPTO’s PTAB Motion to Amend Study (April 30, 2016). However, the Activision proceedings mark the second instance in less than one month where the PTAB granted a motion to amend. See Amerigen Pharm. Ltd. v. Shire LLC, IPR2015-02009, Paper 38 (P.T.A.B. March 31, 2017). It will be interesting to see if the recently granted motions become part of a larger trend toward successful motions to amend, or whether they are merely isolated instances of patent owner successes.