Recently, the PTAB designated as precedential Lectrosonics, Inc. v. Zaxcom, Inc., Case IPR2018-01129, Paper 15 (PTAB Feb. 25, 2019). Lectrosonics provides guidance on the requirements and burdens for motions to amend. This decision replaces the PTAB’s previous guidance on motion to amend practice provided in Western Digital.[1]

Motions to amend are permitted under 35 U.S.C. § 316(d), which states:

“[d]uring an inter partes review instituted under this chapter, the patent owner may file 1 motion to amend the patent in 1 or more of the following ways: (A) Cancel any challenged patent claim. (B) For each challenged claim, propose a reasonable number of substitute claims. … An amendment under this subsection may not enlarge the scope of the claims of the patent or introduce new matter.”

Lectrosonics provides guidance on contingent motions to amend, burden of persuasion, determining a reasonable number of substitute claims, the requirement that the amendment must respond to a ground of unpatentability, scope of the amendments, claim listing, default page limits and submitted evidence, and duty of candor. These issues are summarized below.

Lectrosonics states that contingent motions are handled on a claim-by-claim basis. The PTAB also emphasized that a request to cancel a claim will not be regarded as contingent but that a substitute claim will ordinarily be treated as contingent if the current claim is unpatentable.

Regarding the burden of persuasion that the Office applies when considering the patentability of substitute claims, Lectrosonics reiterates the guidance provided in its Memorandum on “Guidance on Motions to Amend in view of Aqua Products.” Notably, the burden of persuasion lies with the Petitioner to show that the substitute claims are unpatentable by a preponderance of the evidence.

Regarding what is considered a reasonable number of substitute claims, there is a presumption that one substitute claim per challenged claim is a reasonable number of substitute claims. However, the patent owner may demonstrate a need for more than one substitute claim per challenged claim and why the number of proposed substitute claims is reasonable. The determination of a reasonable number of substitute claims is determined on a claim-by-claim basis and, thus, the motion to amend should identify, on a claim-by-claim basis, the challenged claim the substitute claim is to replace.

Regarding the requirement that the amendment respond to a ground of unpatentability involved in the trial, Lectrosonics emphasizes that the rule does not require that every amendment to the claims respond to a ground of unpatentability involved in the trial. For instance, once an amendment is made to a claim that addresses a ground of unpatentability involved in the trial, additional modifications to the claim to address issues under 35 U.S.C. §§ 101 and 112 are permissible.

Lectrosonics states that a proposed substitute claim may not broaden the claim (i.e., remove a feature of the claim) nor add new matter. The motion to amend must set forth written description support in the originally-filed disclosure for each proposed substitute claim in its entirety. If the benefit of an earlier priority date is sought, the motion to amend must set forth written description support in the earlier-filed disclosure for each proposed substitute claim in its entirety. Citations should be made to the application as filed and not to the patent itself. Amendments to dependent claims require an additional showing of support in the independent claim and any intervening claims, from which the dependent claims depends.

Regarding the claim listing, a motion to amend must include a claim listing and each proposed substitute claim must have a new claim number as well as any claims depending from a proposed substitute claim. The claim listing may be filed as an appendix and does not count toward the page limit for the motion since the claim listing should not include any substantive briefing.

Motions to amend and any opposition motions are limited to 25 pages. A patent owner reply and petitioner’s sur-reply are limited to 12 pages.

Regarding the duty of candor, Lectrosonics states that the patent owner is still under a duty to disclose information that the patent owner is aware of that is material to patentability of the substitute claim, if not already of record. Information may be material even if it only applies to a particular feature and no other features of a claim. Further, the petitioner has a duty to disclose information that is inconsistent with Petitioner’s position advanced during the proceeding.

[1] See Western Digital Corp. v. SPEX Techs., Inc., Case IPR2018-00082, Paper 13 (PTAB Apr. 25, 2018).