Holding
In
Background
The inter partes reviews ("IPRs") on appeal involved challenges to
American National alleged that most of the challenged claims of the '747 and '154 patents were obvious over three references. Id. at *6. American National also challenged six of the dependent claims as obvious in further view of a published patent application. Id.
The Board ultimately found that American National had not shown the dependent claims were unpatentable because American National had not shown why a skilled artisan would have modified the asserted references to arrive at the claimed invention. Id. The Board found the remaining claims unpatentable as obvious.
In each of the IPR proceedings,
The Board rejected American National's arguments that the proposed amendments did not respond to a ground of unpatentability and were legally inappropriate; the relevant specification contained an error that rendered the claims non-enabled; and the proposed amended claims were indefinite. The Board thus granted
Federal Circuit
On appeal the Federal Circuit focused on four main arguments:
- whether the Board erred in permitting the patent owner to present proposed amended claims that both responded to a ground of unpatentability and made other changes unrelated to the IPR proceedings;
- whether those proposed amended claims were not enabled because of an alleged error in the specification;
- whether those proposed amended claims should have been rejected for allegedly raising an inventorship issue; and
- whether the Board inappropriately considered the petitioner's sales data in its objective evidence analysis.
Amendments
First, American National argued that the Board erred in allowing amended claims that made additional changes beyond those that were responsive to an unpatentability ground. Id. at *13. In its analysis, the Federal Circuit upheld the Board's "thoughtful analysis" based on the Board's previous decision in
American National argued that allowing a patent owner to correct potential § 112 errors in an amendment violated due process and the Administrative Procedure Act ("APA") because a petition cannot challenge claims under § 112. The Federal Circuit disagreed, holding the petitioner can challenge the proposed amended claims on grounds beyond § 102 and § 103, including § 112. Id. The Federal Circuit found no error in the Board's decision to consider the proposed substitute claims.
Enablement
Second, the Federal Circuit analyzed whether an undisputed error in the specification of the priority application necessarily means the proposed amended claims are not enabled. Id. at *15-16. Specifically, the specification referred to a "Manifold Pressure from Step 168," while both parties agreed that the reference should have been to a "Manifold Pressure from Step 176."
Inventorship
Third, American National argued that the PTAB should have denied the motion to amend because the amendment adding the term "valve enclosure" introduced an issue of inventorship. The Federal Circuit disagreed. Id. The term "valve enclosure" was used in patents incorporated by reference in the patents-at-issue and the patents-at-issue made clear that valve enclosures were well known in the art. Id. Since reciting a well-known structure does not create an issue of inventorship, the Federal Circuit rejected American National's argument. Id. (citing
APA
Fourth, American National argued that the Board violated due process and the APA when analyzing
Take-aways:
The case demonstrates the opportunity for a patent owner to clean up any potential §§ 101 or 112 issues by amending claims during an IPR to address a patentability challenge. "[S]o long as the proposed claim amendment does not enlarge the scope of the claims, does not add new matter, and responds to a ground of unpatentability in the proceeding, the patent owner can may also make additional amendments to a claim." On the other hand, patent owners should be careful to avoid inadvertently opening the claims to additional challenges through further amendments. While the challenged claims are only subject to PTAB review for patentability in view of the prior art, amended claims are open to review under all statutory requirements for patentability. See Uniloc 2017 LLC v.
This case additionally shows (1) that an obvious typo in the specification does not render claims unpatentable for lack of enablement; (2) reciting a well-known structure does not create an issue of inventorship; and (3) a patent owner can rely on sales of an allegedly infringing product as evidence of commercial success if there is evidence the product is coextensive with the claims.
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