Following oral argument in an appeal of an IPR in which the PTAB canceled a number of challenged claims and denied the Patent Owner’s motions to amend, the Federal Circuit requested additional briefing from the parties and the Director of the USPTO (Intervenor), concerning interpretation of the PTAB rule for filing motions to amend during an IPR, 37 CFR § 42.121. Microsoft Corp. v. Proxyconn, Inc., Case Nos. 2014-1542, -1543, Dkt. 49 (Fed. Cir. Apr. 13, 2015). The questions raised by the Federal Circuit panel suggest that the Court is likely to provide guidance on the PTAB’s claim amendment procedures when it issues its decision in the appeal. Such guidance would have a significant effect on pending IPRs in which motions to amend have been or will be filed.

The Federal Circuit raised three questions concerning 37 CFR § 42.121, addressing the following issues: (1) the grounds upon which the PTAB may deny a motion to amend; (2) the Federal Circuit’s standard of review for appeal of a decision on a motion to amend; and (3) how the Board’s interpretation of the rule comports with application of the broadest reasonable interpretation standard in IPRs. The questions raised by the Court are as follows:

  • What is the proper interpretation of 37 C.F.R. § 42.121(a)(2)? In your response, please address the following:
    • Does § 42.121(a)(2)(i) permit the Board to deny a motion to amend for failure to establish patentability over: (i) any prior art of record in the proceeding, even if that prior art was not an original ground of review for the claims sought to be amended; (ii) all prior art known to the patent owner?
    • Are the circumstances in § 42.121(a)(2) an exhaustive list of grounds upon which the Board can deny a motion to amend? If not, under what authority can the Board impose additional grounds upon which to deny a motion to amend, including: (i) failure to establish patentability over any prior art of record in the proceeding, even if that prior art was not an original ground of review for the claims sought to be amended; (ii) failure to establish patentability over all prior art known to the patent owner; (iii) failure to satisfy the requirements set forth in Idle Free Systems, Inc. v. Bergstrom, Inc., No. IPR2012-00027 (P.T.A.B. Jan. 7, 2014)?
  • What is our standard for reviewing the Board’s denial of a motion to amend during inter partes review? What level of deference is owed, and to whom?
  • How does the Board’s interpretation of 37 C.F.R. § 42.121 comport with the rule of broadest reasonable interpretation, one of the rationales for which is the right to amend?

Responses were filed by both parties and the Director on April 27, 2015, and the Federal Circuit’s decision in the case is expected to be issued in the next 60 days. In at least one other Federal Circuit IPR appeal, the Court’s request for supplemental briefing has been relied on as a basis for a petition for rehearing en banc. Helferich Patent Licensing, LLC v CBS Interactive, Inc., Case No. 2014-1556, Dkt. 69 (June 9, 2015).

Resources & Info

Arthrex and the Supreme Court Resource Center

In United States v. Arthrex, Inc., the Supreme Court has heard whether 125+ PTAB decisions rendered through October 2019 must be remanded for new decisions. Read about how that issue developed through our post.

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Our Team

PTABWatch, provided by Marshall, Gerstein & Borun LLP, analyzes and reports recent developments concerning Post-Grant Proceedings at the Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office (USPTO), including Inter Partes Review (IPR), Post Grant Review (PGR), and Covered Business Method (CBM) proceedings.