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Western Digital Corp. v. SPEX Techs., Inc.

Paper No. 13, April 25, 2018

IPR2018-00082 and IPR2018-00084 (Patents 6,088,802 and 6,003,135)


The PTAB issued this order to provide patent owner Spex with “information and guidance on motions to amend,” should Spex elect to file a motion to amend. See Paper 13, p.2. The PTAB noted that this information was meant to be general guidance only, not a “suggestion or request to file a motion to amend.” Id. Under 35 U.S.C. § 316(d), the patent owner may file 1 motion to amend the patent in “1 or more of the following ways: (A) Cancel any challenged claim” or “(B) For each challenged claim, propose a reasonable number of substitute claims.” Id. The statute also states that “[a]n amendment under this subsection may not enlarge the scope of the claims of the patent or introduce new matter.” Id. Congress also authorized the Director of the PTO to set for standards and procedures to allow “a patent owner to move to amend, to cancel a challenged claim, or propose a reasonable number of substitute claims,” per 35 U.S.C. § 316(a)(9). Id. The PTAB also noted that “[a] regulation directed to filing motions to amend claims in an inter partes review is 37 C.F.R. § 42.121.” Id.


The PTAB explained that motions to amend claims may cancel claims and/or propose substitute claims. See Paper 13, p.3. Requests to cancel claims will not be regarded as contingent; however, requests to substitute claims are usually treated as contingent. Id. This means that “a proposed substitute claim normally will be considered only if a preponderance of the evidence establishes the original patent claim it replaces is unpatentable.” Id. The PTAB noted that patent owners should adopt claim-by-claim approaches to specify the contingency of substitution – “which claim for which and in what circumstance.” Id.

The PTAB explained that, in accordance with CAFC case Aqua Products, the Board’s Memorandum on the burden of persuasion, and the CAFC case Bosch, “a patent owner does not bear the burden of persuasion to demonstrate the patentability of substitute claims presented in a motion to amend.” Id. at p.4. “[T]he burden of persuasion will ordinarily lie with the petitioner to show that any proposed substitute claims are unpatentable by a preponderance of the evidence.” Id. When a petitioner ceases to participate in proceedings, the PTAB itself “also may justify any finding of unpatentability by reference to evidence of record in the proceeding.” Id. Before the patentability of any substitute claims can be considered, the PTAB “first must determine whether the motion to amend meets the statutory and regulatory requirements set forth in 35 U.S.C. § 316(d) and 37 C.F.R. § 42.121.” Id.

Under the requirements, there is “a rebuttable presumption that a reasonable number of substitute claims per challenged claim is one substitute claim.” Id. at p.4-5. Patent owners can rebut this presumption by demonstrating “a need to present more than one substitute claim per challenged claim.” Id. at p.5. “The determination of whether the number of proposed substitute claims is reasonable is made on a claim-by-claim basis, consistent with the statutory language that refers to a reasonable number of substitute claims for ‘each’ challenged claim.” Id. To aid the PTAB in making this determination, “the motion should, for each proposed substitute claim, specifically identify the challenged claim that it is intended to replace.” Id.

A patent owner’s amendments must also respond to a ground of unpatentability involved in the trial. Id. Not every word of the amendments has to be solely for the purpose of overcoming a ground of unpatentability, and additional modifications that address potential unpatentability issues that were not raised are not precluded by rule or statute. Id. at p.6. However,” a patent owner may not seek to broaden a challenged claim in any respect, in the name of responding to an alleged ground of unpatentability.” Id. Proper substitute claims under § 42.121(a)(2)(i) “must narrow the scope of the challenged claim[s] [they] replace[] in a way that is responsive to a ground of unpatentability involved in the trial.” Id.

The PTAB further explained that “[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.” Id. at p.7. “[T]he Board requires that a motion to amend set forth written description support in the originally filed disclosure of the subject patent for each proposed substitute claim, and also set forth the support in an earlier-filed disclosure for each claim for which benefit of the filing date of the earlier filed disclosure is sought.” Id. If a petitioner raises an issue of priority of a proposed substitute claim, based on art identified in the opposition to a motion to amend, the patent owner may respond in a reply to that opposition. Id. The PTAB stressed that, to meet this requirement, “citation should be made to the original disclosure of the application, as filed, rather than to the patent as issued.” Id. at p.8. “The motion to amend itself, not the claim listing, must set forth the written description support,” and “the motion must set forth written description support for each proposed substitute claim as a whole, and not just the features added by the amendment.” Id. “This applies equally to independent claims and dependent claims, even if the only amendment to the dependent claims is in the identification of the claim from which it depends.” Id.

“A claim listing, reproducing each proposed substitute claim, is required.” Id. Any claim with a changed scope after the amendment needs to be included in the claim listing as a proposed substitute claim with a new claim number. Id. The PTAB noted that 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.” Id. The appendix cannot contain any substantive briefing, however, and all argument sand evidence that support the motion must be in the motion itself. Id.

The default page limit for a motion to amend, as well as any opposition to the motion, is 25 pages. Id. at p.9. The patent owner’s reply to the opposition is limited to 12 pages. Id. The parties are permitted to contact the PTAB to request additional pages or briefing. Id. “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.” Id. “Deadlines to submit any motion to amend, opposition, reply, or additional briefing may be stipulated by the parties, to the extent permitted by the instructions set forth in the Scheduling Order.” Id.

Under 37 C.F.R. § 42.11, all parties have a duty of candor. Id. A 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, if such information is not already of record in the case.” Id. A petition has a duty of candor “in relation to relevant information that is inconsistent with a position advanced by the petitioner during the proceeding.” Id.

As a final note, the PTAB stated that “[a]dditional information concerning motions to amend is published in the Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,766-67 (Aug. 14, 2012). Id. at p.10.


A copy of the PTAB order can be found here.