In Polygroup Lim ited v. Willis Electric Co., Ltd., IPR2016-01613, Paper 118 (Feb. 26, 2018), the PTAB granted the patent owner Willis Electric’s motion to amend a claim directed to lighted artificial trees. This decision follows the Federal Circuit’s October 2017 decision in Aqua Produ cts Inc. v. Matal, which overturned the PTAB’s implementation of the IPR statutory provision allowing patent owners to file motions to amend by requiring patent owners to demonstrate the patentability of the amended claims. This decision is noteworthy because even after Aqua Products, the PTAB has granted very few motions to amend.

Although the burden to prove unpatentability now rests with petitioners, the PTAB reiterated that a patent owner still must not seek to broaden a claim by amendment or introduce new matter. Willis Electric’s amendment only added new language, for which Willis Electric cited support. As Polygroup did not dispute these points, the PTAB concluded that the amendment was supported and did not broaden the claim.

Polygroup instead challenged the amendment on indefiniteness grounds. Polygroup argued that the amended language was subject to two interpretations. Willis Electric responded that both interpretations permissibly fall within the breadth of the claim. The PTAB agreed with Willis Electric, finding that there is a distinction between claim breadth covering two or more options and “impermissible two plausible definitions.”

Polygroup also asserted that the amended claim was obvious over a combination of references. The PTAB characterized Polygroup’s reason to combine the prior art as a “naked assertion . . . unsupported by evidence or technical reasoning.” Further, the PTAB found that the proposed combination would result in “a substantial change in function” in the prior art. Accordingly, the PTAB held that Polygroup failed to carry its burden to show unpatentability of the amended claim.

Written By: Scott Raevsky and Casey D. Donahoe, Ph.D.