The Patent Trial and Appeal Board (PTAB) recently granted a patent owner’s motion to amend its claims in an inter partes review (IPR) proceeding. A patent owner’s motion to amend has typically only been granted on rare occasions since enactment of the America Invents Act, and thus the IPR review process, on September 16, 2012.  The PTAB’s decision gave the patent owner, Tire Hanger Corporation (“Tire Hanger”), a much needed win in the IPR proceeding petitioned for and instituted by the challenger, Shinn Fu Corporation (“Shinn Fu”).

While guidelines for amending claims of a granted patent are provided in 37 C.F.R. §42.121, patent owners have historically found it difficult to successfully persuade the PTAB to grant entry of amended claims in an IPR proceeding.  In short, 37 C.F.R. §42.121 provides two grounds for denying a patent owner’s motion to amend.  For example, a motion to amend may be denied where the amendment does not respond to a ground of unpatentability involved in the trial, or if the amendment seeks to enlarge the scope of the claims of the patent or introduce new subject matter.  However, it has been held that patent owners must also demonstrate the patentability of proposed substitute and/or amended claims over the prior art of record for grant of a contingent motion to amend to be warranted.  See Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1307-1308 (Fed. Cir. 2015).  In doing so, the patent owner is required to explain why the claims are patentable over the prior art of record. Id.

In the instant case, Tire Hanger did not file a Patent Owner Response to Shinn Fu’s petition, thereby waiving Tire Hanger’s available arguments in defense of the patentability of the challenged Claims 1-5 of U.S. Patent No. 6,681,897 (“’897 Patent”).  In fact, at oral argument, Tire Hanger acknowledged that Claims 1-5 were not patentable.  Instead, Tire Hanger proposed substitute Claims 6-10, which essentially included the same five steps as Claims 1-5, but also added greater detail to several steps of the independent claim.

In deciding whether to grant Tire Hanger’s motion to amend, the PTAB focused on the purpose of the claimed method relative to the teachings of the prior art of record.  More specifically, the method of the ‘897 Patent described the removal and replacement of a wheel of a vehicle without requiring a person to bend over while doing so.  The PTAB stated that none of the prior art of record recognized the desire to reduce bending while handling a heavy object.  Rather, the prior art of record merely described hanging a wheel somewhere on a wall or rail.  While simple, the PTAB declined to deprecate the claimed method, which utilized a known hanger for a tire/wheel assembly on a specific structure (an automotive hoist), in a specific manner (in proximity to the height of a wheel on an elevated vehicle), and for a specific purpose (to reduce bending).

As such, the PTAB found that the substitute claims rose to the level of a novel and non-obvious method over the prior art, and granted Tire Hanger’s motion to amend.

Petition for Inter Partes Review by Shinn Fu Company of America, Inc., IPR2015-00208 (PTAB April 22, 2016, Order) (DeFranco, APJ)