By Levent Herguner and Matt Johnson

In a rare successful motion to amend, the PTAB found certain claims of a pipeline monitoring system patentable, and allowed substitution of amended claims for others deemed unpatentable.  See Syrinix Inc. v. Blacoh Fluid Control Inc., IPR2018-00414, Paper No. 33 (PTAB May 22, 2019).  The Board determined that Syrinix, Inc. (“Petitioner”) established that nine claims of Blacoh Fluid Control, Inc.’s (“Patent Owner”) U.S. Patent No. 7,219,553 B1 (“the ’553 patent”) were unpatentable.  The Board also granted Patent Owner’s Motion to Amend two of those claims, permitting Patent Owner to replace them with new, substitute claims.

Petitioner had argued that each of the ’553 patent’s 21 claims were invalid because they were either anticipated or made obvious by earlier inventions.  The Board cited the Federal Circuit’s Harmonic Inc. v. Avid Tech., Inc. holding that “[i]n an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.”  815 F.3d 1356, 1363 (Fed. Cir. 2016).  Accordingly, the Board considered whether Petitioner demonstrated that the claims were unpatentable by a preponderance of the evidence.  The Board determined that Petitioner met this burden for claims 1–6, 10, 12, and 14, but did not for claims 7–9, 11, 13, and 15–21.

The Board then considered Patent Owner’s Motion to Amend the ’533 patent, which was contingent upon a finding of unpatentability with respect to the original challenged claims.  Specifically, Patent Owner sought to amend the ’553 patent by substituting proposed claim 22 for issued claim 1, claim 23 for issued claim 13, and claim 24 for issued claim 14.  The Board only considered the Motion to Amend with respect to claims 1 and 24 because Petitioner did not demonstrate claim 13 was unpatentable.  The Board noted that, per 35 U.S.C. § 316(d), amended claims are not added to a patent as of right during inter partes review, but are instead proposed as a part of a motion to amend.

The Board also cited Lectrosonics, Inc. v. Zaxcom, Inc., IPR2018-01129, Paper No. 15 (PTAB Feb. 25, 2019), a precedential order that we previously discussed in our post on March 18, 2019.  According to Lectrosonics, a patent owner seeking to substitute claims must demonstrate that the proposed claims satisfy the threshold statutory and regulatory requirements set forth in 35 U.S.C. § 316(d) and 37 C.F.R. § 42.221.  Specifically, the patent owner must demonstrate that “(1) the amendment responds to a ground of unpatentability involved in the trial; (2) the amendment does not seek to enlarge the scope of the claims of the patent; (3) the amendment proposes a reasonable number of substitute claims; and (4) the amendment does not introduce new subject matter and has written description support in the original disclosure.”

The Board determined that the proposed amendments satisfied all the Lectrosonics elements.  The Board emphasized that Patent Owner proposed only one substitute claim to replace each challenged claim, which is presumptively reasonable under 37 C.F.R. § 42.121(a)(3) (A reasonable number of substitute claims, by rebuttable presumption, is “one substitute claim . . . to replace each challenged claim.”).  The Board also noted that the amendments narrowed the issued claims by adding limitations without removing any substantive limitations.  Further, the Board stated that the amendments addressed an issue central to Petitioner’s alleged grounds of unpatentability with respect to disclosures in prior art.  Finally, the Board was not convinced by Petitioner’s arguments that proposed claims 22 and 24 introduced new matter (1) that lacked written description support in the original disclosure; (2) that was anticipated by prior art; and (3) that was indefinite because it combines two separate statutory classes of invention.

Accordingly, the Board granted the Motion to Amend because Patent Owner met the statutory requirements of 35 U.S.C. § 316(d) and the procedural requirements of 37 C.F.R. § 42.221.

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Matt Johnson is one of the Firm's primary contacts on practice before the PTAB. Matt consults on nearly every one of Jones Day's over 290 PTAB cases to date. He currently serves as co-chair of Jones Day's PTAB practice.