PTAB / PTAB Procedures and Rules

Can you work in a group? – Motions to amend and the duty of candor (PTAB decision)

Published April 24, 2016

In what could become a more common occurrence, the PTAB granted patent owner Tire Hanger’s motion to amend, allowing five new claims.  Issued the same day that the Supreme Court heard oral arguments in Cuozzo, the PTAB Order helps clarify a patent owner’s duty of candor when arguing the patentability of new claims brought in a motion to amend.

In opposing the motion, petitioner Shinn Fu argued that Tire Hanger failed to address all known art because its motion did not discuss certain prior art references of record.  The PTAB rejected Shinn Fu’s argument, noting that “[a] patent owner meets its duty of candor 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.” Decision at 20.

The PTAB found that, although the motion to amend did not specifically address a known reference, it did “argue patentability over substantially similar prior art.”  Thus, when several known prior art references “closely resemble[]” one another, are “substantially similar,” and contain “duplicative” teachings, a Patent Owner need “discuss[] only a representative few.”

The decision also confirmed that an amending patent owner is “not required to prove that the claims are patentable over every piece of prior art known to a skilled artisan,” but at least must “explain why the claims are patentable over the prior art of record,” as set forth in Microsoft v. Proxyconn.

This PTAB decision follows the Federal Circuit’s recent decision in Nike v. Adidas, which clarified that a patent owner need only address material prior art when moving to amend.

Tire Hanger


Posted on 04/24/2016 by Andrew M. Mason