United States: Withdrawal Of Petitioner From IPR Proceeding All But Ensures Success In Contingent Motion To Amend

On remand from the Court of Appeals for the Federal Circuit, the Patent Trial and Appeal Board granted patent owner’s motion to amend on the basis that the totality of the record did not demonstrate by a preponderance of the evidence that patent owner’s proposed substitute claims were unpatentable.

The Board originally issued a final written decision in an inter partes review (IPR) proceeding, holding that the challenged claims of U.S. Patent No. 6,904,796 (the “’796 Patent”) were unpatentable as obvious or anticipated by the prior art. The ’796 Patent is directed to a tire positioning tool that is able to work with remote tire monitoring systems made by different manufacturers. In its final written decision, the Board denied patent owner’s motion to amend because patent owner failed to set forth a prima facie case for the relief it requested or satisfy its burden of proof to show patentability of the proposed substitute claims. Of relevance here, the Board determined that certain proposed substitute claims included a means-plus-function limitation that could not be construed, and therefore were indefinite under 35 U.S.C. § 112.

Patent owner appealed the Board’s decision, but petitioners never entered an appearance nor took part in the appeal. The Federal Circuit affirmed the Board’s findings of unpatentability of the original claims, but vacated and remanded the Board’s denial of patent owner’s motion to amend. The Federal Circuit explained that the Board erred in assigning the burden of proof to patent owner and, citing Aqua Products, Inc. v. Matal, 872 F.3d 1290 (Fed. Cir. 2017) reiterated that the Board must justify any finding of unpatentability by reference to the record in situations where the challenger has stopped participating in the proceeding and the Board proceeds to final judgment. The Federal Circuit later clarified that a petitioner bears the burden of proving that the proposed amended claims are unpatentable by a preponderance of the evidence. See Bosch Auto. Serv. Sols., LLC v. Iancu, Order on Petition for Panel Rehearing, No. 2015-1928 (Fed. Cir. Mar. 15, 2018).

On remand, the parties notified the Board that they had reached a settlement. Petitioners also informed the Board that they wished to withdraw from the IPR and would no longer oppose patent owner in the proceeding. The Board granted petitioners’ request to withdraw and treated such abandonment as a request for adverse judgment. Patent owner—the only party left in the proceeding—requested that the Board reconsider its proposed amended claims per the Federal Circuit’s guidance. Those amended claims included, inter alia, additional limitations reciting a “means for recording” and a “means for selecting.”

Turning to the proposed claims, the Board found that the additional limitations were responsive to the grounds of unpatentability involved in the IPR proceeding and that those limitations did not enlarge the scope of the claims of the ’796 Patent. See 37 C.F.R. § 42.121(a)(2)(i); 35 U.S.C. § 316(d)(3). The Board further held that the proposed substitute claims were adequately described in the ’796 Patent’s specification and did not introduce new subject matter. See 37 C.F.R. § 42.121(a)(2)(ii); 35 U.S.C. § 112 ¶ 1.

After determining that patent owner’s motion to amend met the pertinent statutory and regulatory requirements, the Board found that the totality of the record did not establish by a preponderance of the evidence that the proposed substitute claims were unpatentable. Relying on the Federal Circuit’s guidance, the Board emphasized its role in evaluating the patentability of the claims in light of the record and confirmed that patent owner does not bear the burden of proving that the substitute claims are patentable. And while the Board originally rejected certain proposed amended claims as indefinite under 35 U.S.C. § 112, the Board recognized that petitioners’ withdrawal from the IPR proceeding had changed the “facts and evidence on indefiniteness.” For instance, in light of petitioners’ request, the Board had expunged petitioners’ opposition to the motion to amend.

Thus, on the current record, the Board found that petitioners did not meet their burden to show by a preponderance of the evidence that the amended substitute claims were unpatentable as indefinite under 35 U.S.C. § 112. Consequently, the amended claims were deemed patentable.

Practice Tip:

 When a petitioner withdraws from an IPR proceeding, the Board may deny a motion to amend only if it justifies that finding of unpatentability by reference to the evidence of record. Thus, in cases where a patent owner may escape from the Board with substitute claims that can be asserted against future defendants, a patent owner may have an incentive to reach settlement with the IPR petitioner before a decision is final.

Autel U.S. Inc., and Autel Intelligent Technology Co. Ltd. v. Bosch Automotive Service Solutions LLC, Case IPR2014-00183, Paper 62 (Aug. 1, 2019)

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
Similar Articles
Relevancy Powered by MondaqAI
 
In association with
Related Topics
 
Similar Articles
Relevancy Powered by MondaqAI
Related Articles
 
Related Video
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Mondaq Free Registration
Gain access to Mondaq global archive of over 375,000 articles covering 200 countries with a personalised News Alert and automatic login on this device.
Mondaq News Alert (some suggested topics and region)
Select Topics
Registration (please scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.

Disclaimer

The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.

General

Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions