PTAB Designates Western Digital as Informative of Motions to Amend

By: Rich Graham and Matt Johnson

On June 1, 2018, the PTAB announced new guidance on motions to amend in AIA trials.

In view of the decision from the United States Court of Appeals for the Federal Circuit in Aqua Products, Inc. v. Matal, 872 F.3d 1290 (Fed. Cir. 2017), regarding motion to amend practice and procedure in AIA trials, PTAB has de-designated as precedential MasterImage 3D, Inc. v. RealD Inc., Case IPR2015-00040 (PTAB July 15, 2015) (Paper 42) and has de-designated as informative Idle Free Sys., Inc. v. Bergstrom, Inc., Case IPR2012-00027 (June 11, 2013) (Paper 26). Both decisions have been removed from PTAB’s Precedential and Informative Decisions web page.

Concurrently, PTAB has designated as informative the following order in Western Digital Corp. v. SPEX Techs., Inc., which provides guidance on motion to amend practice in AIA trials. Western Digital Corp. v. SPEX Techs., Inc., Case IPR2018-00082, -00084 (PTAB Apr. 25, 2018) (Paper 13). This order provides guidance and information regarding statutory and regulatory requirements for a motion to amend in light of Federal Circuit case law, as well as the de-designation of MasterImage as precedential and Idle Free as informative at the Board.  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.