Takeaway: In a motion to amend, it is not the patent owner’s duty to show patentability over all existing prior art. However, if a petitioner identifies prior art in its opposition, then the burden of persuasion remains with the patent owner to demonstrate patentability of the amended claims.

In its Order by an expanded panel, the Board provided further guidance regarding filing of motions to amend. Patent Owner requested a conference call to discuss its intent to file a motion to amend. The Board instructed Patent Owner to follow all of the requirements articulated in Idle Free Systems, Inc. v. Bergstrom, Inc., IPR2012-00027, Paper 26 (PTAB June 11, 2013). The Board then clarified the statement in Idle Free that the patent owner must show patentable distinction over the prior art of record and prior art known to the patent owner.

First, the Board clarified that “prior art of record” refers to: any material art in the prosecution history of the patent; any material art of record in the current proceeding, including art asserted in grounds on which the Board did not institute review; and any material art of record in any other proceeding before the Office involving the patent.

The Board then stated that “prior art known to the patent owner” is limited to “the material prior art that Patent Owner makes of record in the current proceeding pursuant to its duty of candor and good faith to the Office under 37 C.F.R. § 42.11, in light of a Motion to Amend.” The Board further stated that a patent owner’s duty of candor and good faith should place initial emphasis on the added limitations, even if the art does not include all of the rest of the claim limitations.

Finally, the Board noted that once the patent owner has set forth a prima facie case of patentability over the prior art of record, the burden of production shifts to the petitioner. The petitioner may, in its opposition, explain why the patent owner did not make out a prima facie case of patentability, and may rebut the prima facie case, which can include identifying additional prior art. The patent owner then can respond in the reply. The ultimate burden of persuasion remains with the patent owner.

MaserImage 3D Inc. and MasterImage 3D Asia, LLC v. RealD Inc., IPR2015-00040
Paper 42: Order on Conduct of the Proceeding
Dated: July 15, 2015
Patent: 8,220,934 B2
Before: Nathan K. Kelley, Scott B. Boalick, Jameson Lee, James B. Arpin, Bart A. Gerstenblith, and Susan L.C. Mitchell
Written by: Lee