In the recent case Shinn Fu vs. Tire Hanger, No. 16-2250 (Fed. Cir. 2017), decided on July 3, 2017, the United States Court of Appeals for the Federal Circuit (“CAFC”) vacated a Patent Trial and Appeal Board (“Board”) decision (Decision No. IPR2015-00208) which granted Tire Hanger’s motion to amend in an inter partes review (“IPR”). In vacating the decision, the Court reasoned that the Board did not “properly consider the arguments petitioner set forth in its opposition to the patent owner’s motion to amend.” By reasoning that the Board did not properly consider the petitioner’s arguments, the Court vacated the grant of the motion to amend.
As Troy discussed in his previous blog post article, The Supreme Court to Determine the Constitutionality of Inter Partes Reviews, the IPR was first introduced by the Leahy-Smith America Invents Act (“AIA”) on September 16, 2012. At a general level, an IPR is a trial proceeding conducted by the Board which allows any third party to challenge the patentability of an issued patent. A third party may initiate an IPR by filing a petition within nine months of the issuance of a patent, and may challenge the validity of the patent based on a lack of novelty (§ 102) or obviousness (§ 103).
Under the AIA, patent owners are permitted to file a motion to amend the claims of a patent during an IPR. However, a motion to amend during an IPR has proved not be a viable approach for patent owners. This is largely due to a lack of guidance. In fact, Shinn Fu vs. Tire Hanger was only the sixth time that the Board had granted a motion to amend since the IPR became available in 2012.
In the instant case, Tire Hanger holds U.S. Patent No. 6,681,897 (“the ’897 patent”), which generally relates to “apparatuses and methods for handling and supporting vehicle wheels that have been temporarily removed from a vehicle positioned on a lift or hoist.” The apparatuses and methods embodied in the ‘897 patent allow an auto mechanic to remove and/or replace a wheel without having to bend over.
Shinn Fu filled a petition for IPR of claims 1-5 of the ‘897 patent, arguing that the claims of the ‘897 patent were invalid as being anticipated or obvious. After the IPR was instituted, Tire Hanger filed a motion to amend substituting claims 6-10 for the original claims 1-5. The Board granted the motion to amend in 2016, finding the substitute claims to be patentably distinct over the prior art of record.
In its decision to grant the motion to amend, the Board laid out a couple of important guidelines for patent owners seeking a motion to amend during IPR.
First, the Tire Hanger decision seems to alleviate the burden of showing patentability of the amended claims by relaxing the burden requiring patent owners to address all prior art of record. The Board stated that “[a] patent owner meets its duty of condor and good faith by grouping prior art references together according to their particular teachings without having to make a presentation on each and every reference giving rise to that same teaching.” In other words, given that the patent owner addresses prior art references that were grouped together according to their particular teachings, a patent owner does not have to address all prior art of record separately.
Second, the Tire Hanger decision seems to alleviate the evidentiary burden exerted on patent owners when filling a motion to amend. The Board stated “Tire Hanger did not file an expert declaration with its motion to amend, relying instead on express disclosures on the prior art and the challenged patent as evidence of the level of skill in the art.” Though a successful establishment of obviousness or non-obviousness in AIA proceedings most often requires expert declarations, by granting the motion to amend without an expert declaration, the Board in Tire Hanger demonstrated that expert declarations are not always required. Indeed, the Tire Hanger decision is an example of where a patent owner successfully established the non-obviousness of the proposed claim amendments in a motion to amend without an expert declaration.
Third, the Tire Hanger decision seems to stress a reasonable interpretation of claim language in light of the specification and prosecution history. In their motion to amend, Tire Hanger added the term “human” to the claims. In response, Shinn Fu argued that the term “human” did not meet the written description requirement, as the specification of the ‘897 patent only referred to a “worker,” not a “human.” Shinn Fu stated that “Tire Hanger has broadened the claims to include ‘such embodiments or species as newborns, toddlers, children, disabled people, and decrepit people’”. After hearing the arguments, the Board held that Shinn Fu’s proposed construction was unreasonable, and that the proposed amendment of the claims met the written description support.
The Board’s decision granting the motion to amend was then appealed to the Federal Circuit. On appeal, Shinn Fu argued that the amendment of the claims proposed by Tire Hanger simply involves the combination of prior art including Curran (U.S. Patent No. 4,976,336) and Conrad (U.S. Patent No. 4,650,114). Shinn Fu further provided what it believed to be the motivation to combine the prior art.
Following arguments on appeal, the Court noted that “the Board did not provide any analysis with regard to the manner in which Shinn Fu proposed its key obviousness combination.” The Court went on to state that “[w]e have no meaningful way to review the Board’s patentability determination in light of Shinn Fu’s arguments.” In doing so, the Court vacated the Board’s order granting Tire Hanger’s motion to amend, and the case was remanded to the Board for further proceedings.
While many in the patent community would have hoped the Tire Hanger case would act as a leading guideline for a successful motion to amend, such a thought may prove to be just that: too hopeful. The Tire Hanger decision appears to have laid out guidelines with respect to motions to amend during an IPR, but only time will tell how those guidelines will be applied or whether the opinion will clarify the rules.
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