Shinn Fu Co. v. Tire Hanger Corp. – The PTAB Grants a Rare Motion to Amend

August 02, 2016
Patent Office Trials Blog

taska blogThe Patent Trial and Appeal Board (“the PTAB”) has a staunch reputation for rarely granting a patent owner’s motion to amend claims during inter partes review proceedings (to date, the Board has only granted six such motions to amend).  However, in the matter of Shinn Fu Co. v. Tire Hanger Corp., IPR2015-00208 (decided on April 22, 2016), the PTAB granted The Tire Hanger Corporation’s (“Tire Hanger”) motion to amend the claims of its U.S. Patent No. 6,681,897 (“the ‘897 patent”).  The PTAB’s decision allowed Tire Hanger to salvage invalid claims with narrowing claim amendments and provides encouragement to patent owners that more motions to amend may be granted by the PTAB in the future.

A patent owner’s right to file one motion to amend the claims during inter partes review is guaranteed by statute (35 U.S.C. § 316(d)).  This right to amend helps justify the application of the lower broadest reasonable interpretation standard for claim construction during inter partes review.  However, as a practical matter, motions to amend are rarely granted by the PTAB, and the burdens placed on the patent owner by the PTAB to obtain entry of a reasonable number of substitute claims are difficult to meet.  For instance:

(1) The proposed substitute claims must not enlarge the scope of the invention;

(2) The proposed substitute claims must be supported by the original specification;

(3) The patent owner bears the burden of establishing patentability of the proposed substitute claims over the prior art by a preponderance of the evidence. See e.g., 35 U.S.C. § 316(d); 37 C.F.R. § 42.121(b); and Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1307–08 (Fed. Cir. 2015).

Rather than filing a Patent Owner Response, Tire Hanger instead responded to Shinn Fu’s petition by filing a contingent motion to amend the claims. In its Reply, the Petitioner Shinn Fu argued that Tire Hanger had failed to meet its burden of establishing the patentability of the proposed substitute claims over the prior art because Tire Hanger had failed to expressly address some of the prior art references.  However, the PTAB disagreed with Shinn Fu, and instead found that, although Tire Hanger’s motion to amend did not address some of the references per se, it did argue for patentability over substantially similar prior art references.  Given the duplicative nature of the references, the PTAB did not fault Tire Hanger for “discussing only a representative few in its Motion to Amend” and, as such, found that “Tire Hanger has complied with its duty of candor in addressing the relevant prior art” as 37 C.F.R. § 42.11 stipulates.  Id. at 20.  In short, the PTAB found 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.”  Id. at 19-20.

Shinn Fu Co. v. Tire Hanger Corp. offers encouragement to patent owners that although successful motions to amend are rare, going forward, the PTAB may actually be willing to grant motions to amend, provided that the patent owner meets the PTAB’s strict requirements.


Andrew Taska

Email: ataska

Drew is a partner in the Washington, D.C. office where he is a member of the firm’s Electrical/Mechanical Patent group. Drew practices in all areas of patent law with an emphasis on preparing and prosecuting patent applications, including reexamination and reissue applications, international patent portfolio management, counseling clients on intellectual property matters, and patent litigation. He also prepares opinions in the areas of patentability, infringement and product clearance.

Drew has developed a broad range of technical expertise in areas including, but not limited to, optics, microprocessors, printing and scanning, image processing, digital recording media, automotive technologies, mobile communications, computer software and hardware, networking, green technologies, semiconductors, microlithography, thermodynamics, solid-state physics, sleep related technologies and the mechanical arts.

Drew is one of the firm’s leaders in training client legal and technical staffs to implement strategies for successful prosecution before the USPTO and to develop IP management practices that will help achieve their business objectives. Drew also devotes a significant part of his practice to training and mentoring the firm’s associates.

Drew plays an active role on the patent practice committees of several prominent IP professional organizations to stay at the forefront of the latest changes / proposed changes to U.S. patent laws and USPTO rules.