Lectrosonic v. Zaxcom: PTAB Precedent on Motion to Amend Practice

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By: Margaux A. Savee

So you’ve decided to file a Motion to Amend…don’t forget to read this important precedential decision which provides guidance on the requirements for a Motion to Amend

Lectrosonics Inc. v. Zaxcom Inc., Cases IPR2018-01129, -1130, Paper 15 at 4 (PTAB Feb. 25, 2019) (designated: Mar. 7, 2019)

Lectrosonics is a precedential opinion issued by the Board on Motion to Amend practice and replaces Western Digital Corp. v. SPEX Techs., Inc., Cases IPR2018-00082, -84 (PTAB April 25, 2018). In Lectrosonics, the Board provides guidance regarding the statutory and regulatory requirements for a Motion to Amend.

The Board’s Order outlines guidance specifically on:

(1) Contingent Motions to Amend

  • A request to cancel claims will not be regarded as contingent.

  • A request to substitute claims will ordinarily be treated as contingent; a substitute claim will be considered only if a preponderance of the evidence establishes that the original claim that it replaces is unpatentable.

  • Patent owners should adopt a claim-by-claim approach. Patent owner should identify which substitute claim is substituted for which original claim.

(2) Burden of persuasion

·         Referring to Aqua Products, the Board’s November 21, 2017 Guidance, and Bosch, the patent owner does not bear the burden of persuasion to demonstrate patentability of substitute claims. The burden of persuasion will lie with the petitioner or with the Board in cases where the petitioner ceases to participate.

(3) Reasonable number of substitute claims

  • A patent owner may propose “a reasonable number of substitute claims.” 35 U.S.C. § 316(d)(1)(B). There is a presumption that a reasonable number of substitute claims is one substitute claim per challenged claim. 37 C.F.R. § 42.121(a)(3). However, a patent owner may rebut this presumption upon demonstration of a need to present more than one substitute claim per challenged claim. 

(4) Respond to a ground of unpatentability involved in the trial

  • “A motion to amend may be denied where…[t]he amendment does not respond to a ground of unpatentability involved in the trial.” 37 C.F.R. § 42.121(a)(2)(i).

  • Modifications that address potential 35 U.S.C. § 101 or § 112 issues are not precluded.

(5) Scope of claims

  • Substitute claims may not enlarge the scope of the claims or introduce new matter. 35 U.S.C. § 316(d)(3); 37 C.F.R. §42.121(a)(2)(ii).

  • The Motion to Amend must set forth where the substitute claim has written description support in the originally filed disclosure, and also set forth support in an earlier filed disclosure when benefit of an earlier filing date is sought. 37 C.F.R. §§ 42.121(b)(1), 42.121(b)(2). Citation should be made to the original disclosure of the application, as filed, rather than to the patent as issued.

(6) Claim listing

  • The Motion to Amend must include a claim listing. 37 C.F.R. § 42.121(b). The claim listing may be included as an appendix to the Motion to Amend and does not count toward the page limits. The appendix must not include any substantive briefing.

  • Substitute claims should have a new claim number, including any dependent claim that a patent owner intends to be depending from a proposed substitute independent claim.

  • Changes should be made with the use of brackets for deleted text and underlining for inserted text.

(7) Default page limits and submitted evidence

  • The Motion to Amend and the Opposition to the Motion to Amend are each limited to 25 pages. 37 C.F.R. § 42.24(a)(1)(vi), (b)(3).

  • A Patent Owner’s Reply and a Petitioner’s Sur-Reply are each limited to 12 pages. 37 C.F.R. § 42.24(c)(3); Trial Practice Update, Appx. A, 5.

  • A petitioner may submit additional testimony and evidence with an Opposition to the Motion to Amend.

  • The Reply and Sur-Reply may only respond to arguments raised in the preceding brief. The Sur-Reply may not include new evidence, however, deposition transcripts of a cross-examination reply witness may be submitted.

(8) Duty of Candor

  • All parties have a duty of candor. 37 C.F.R. § 42.11.

  • Patent owner has a duty to disclose any information for 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.

  • Petitioner must also disclose relevant information that is inconsistent with its petition, for example, objective evidence of non-obviousness.

(9) Reference to the Office Patent Trial Guide and Trial Practice Guide Update

For more information on these changes, and your options, please contact the author, Margaux A. Savee, or a member of our Post Grant Practice. To learn more about the USPTO’s  Motion to Amend Pilot Program, click here.

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