PTAB Grants Rare Claim Amendment in an IPR

Authored by Brian S. Mudge and Dragan Plavsic 

In a recent IPR decision, the PTAB granted a patent owner’s motion to amend, a relatively rare occurrence in AIA trials to date. The case, Shinn Fu Co. of America, Inc. v. The Tire Hanger Co., No. IPR2015-00208, addressed the extent to which a patent owner must analyze prior art in meeting its requirements to establish patentability of proposed new claims. Providing further guidance as to the Federal Circuit’s recent Nike1 opinion, the PTAB ruled that there is no requirement that a patent owner analyze expressly every individual reference cited during prosecution of the challenged patent — particularly where there are many different permutations of the cited prior art. Essentially, the PTAB’s decision means that so long as the patent owner groups prior art references according to claim features they teach, and examines a representative one out of each group for each feature, the patent owner would meet its duty of candor and satisfy its burden for the motion to amend.

Key Takeaway: In IPRs, a patent owner filing a motion to amend the claims meets the duty of good faith and candor, and satisfies its burden, by grouping redundant references in terms of claim limitations, and selecting representative references from each group to examine.

Case Facts: Shinn Fu filed an IPR petition challenging Tire Hanger’s patent no. 6,681,897, which is directed to a method of handling a wheel of a motor vehicle while the vehicle is elevated on a hydraulic lift or hoist for repair by a service technician. The PTAB granted the petition and instituted IPR trial of claims 1–5 of the ’897 patent. In response, Tire Hanger filed a motion to amend, without filing a patent owner response to the Petition. In the motion to amend, the Tire Hanger proposed substitute claims 6–10. In particular, claim 6 incorporated the same five steps as original claim 1, while adding several new limitations not found in the original claims. The issues before the PTAB were (1) whether Shinn Fu met its burden of proving, by a preponderance of the evidence, that claims 1–5 of the ’897 patent are unpatentable, and (2) whether Tire Hanger met its burden of showing that substitute claims 6–10 are patentably distinct over the prior art.

No PO Response to Petition is Waiver: Because Tire Hanger elected not to file a Patent Owner Response, the PTAB held that Tire Hanger waived any arguments in defense of patentability of challenged claims 1–5. Further, at oral argument, Tire Hanger acknowledged that the original claims “are not patentable,” and that it had decided not to proceed with those claims but instead rely on the amended claims. Accordingly, the PTAB determined that there was no dispute that the individual steps of the originally challenged claims were known in the art, and concluded that Shinn Fu established that original claims 1-5 were unpatentable as anticipated and/or obvious.

PO Burden to Analyze Prior Art in Motion to Amend: Shinn Fu opposed the motion to amend and argued that Tire Hanger did not meet its burden, as patent owner, to establish patentability of new claims 6-10 over the known prior art. In particular, Shinn Fu criticized Tire Hanger for not addressing the Conrad reference, which teaches a wall-mounted hook for tires – and which had been cited during original prosecution of the ’897 patent.

The PTAB rejected the argument by Shinn Fu. The Board pointed out that Tire Hanger did analyze other prior art references disclosing wall-mounted tire hanging devices, and noted that Shinn Fu itself had acknowledged that these other references were similar to Conrad. Because these references were viewed as duplicative as to this feature, the Board declined to fault Tire Hanger for only addressing a representative group of references and not specifically analyzing the claims in view of Conrad. The PTAB’s final decision here rests on the finding of the duplicative nature of the group of references, where Tire Hanger rightfully discussed only a representative few in its Motion to Amend.

Therefore, the PTAB concluded that Tire Hanger complied with its duty of candor in addressing the relevant prior art, as set out in Nike.

In so doing, the PTAB has shown patent owners a path for establishing patentability of new claims over prior known prior art. A patent owner may not need to analyze every individual reference that may be relevant to the amended claims. Rather than address each and every reference that may have been cited in the patent’s file history, a patent owner can, according to the Shinn Fu case, satisfy its burden under Nike2 by grouping references as to teaching of claim features and analyzing representative references against the claims.

[1]   Nike, Inc. v. Adidas AG, No. 2014-1719 (Feb. 11, 2016)

[2]   In Nike, the Federal Circuit held that, when amending claims in an IPR, a patent owner may satisfy the duty of good faith and candor by addressing any material prior art in the record (or that it makes of record) and, if there is no such material art of which it is aware that is not of record, a conclusory statement may suffice.