Motions to Amend: Is the PTAB's Lectrosonics Order Just of Western Digital?

March 11, 2019

         Spring gardening season has begun and the USPTO is once again planting its Motion to Amend

(“MTA”) seeds. In a substantial redux of Western Digital Corporation v. Spex Technologies, IPR2018-00082,

-00084, paper 13, the PTAB this past week designated paper 15 of Lectrosonics v. Zaxcom, IPR2018-

01129, 01130(“Lectrosonics Order”) as an informative decision. 

          As you may recall, the PTAB explained in Western Digital that:

once a proposed claim includes amendments to address a prior art grounds in the trial, a patent owner also may include additional limitations to address potential § 101 or § 112 issues, if necessary. Allowing an amendment to address such issues, when a given claim is being amended already in view of a 35 U.S.C.§ 102 or § 103 ground, serves the public interest by helping to ensure the patentability of amended claims.

What’s new in the Lectrosonics Order? A panel consisting or acting chief administrative patent judge, 

Scott Boalick, and administrative patent judges Kalyan Deshpande and Lynne Pettigrew clarify what 

constitutes impermissible enlargement in an MTA. Consistent with longstanding reissue practice, 

the PTAB makes that clear:

A patent owner may not seek to broaden a challenged claim in any respect that enlarges the scope of the claims of the patent, for example, in the name of responding to an alleged ground of unpatentability. Likewise, a proposed substitute claim may not remove a feature of the claim in a manner that broadens the scope of the claims of the challenged patent …. [A] proposed substitute claim adding a novel and nonobvious feature or combination to avoid the prior art in an instituted ground of unpatentability will not enlarge the scope of the claims of the patent.

            Although patent owners are free to present proposed substitute claims to address potential prior

art, § 101 or § 112 issues, any claim change should at least be clarifying in nature if not presented in the

form of a clearly narrowing amendment which meets the “novel and non-obvious feature” standard 

articulated in the Lectrosonics Order. If the latter, patent owners should remain mindful that claim features

proposed in an MTA will be construed using the same claim construction standard that would be used to

construe the claim in a civil action under 35 U.S.C. 282(b), including construing the claim in accordance

with (i) the ordinary and customary meanings of such claim as understood by one of ordinary skill in the 

art and (ii) the prosecution history pertaining to the patent. This approach to claim interpretation may

prove challenging for the PTAB where proposed claim amendments have no ordinary meaning and the 

prosecution history sheds no additional light.

            Despite shifting the burden of proof to petitioners, Aqua Products has not appreciably improved the

success of motions to amend. The PTAB under the direction of Director Iancu continues to pursue a 

system which provides patent owners a more robust claim amendment opportunity. However, patent 

owners will still be well served to maintain pending applications for important patent portfolios and utilize

ex parte reexam and reissue as tools to buttress claim scope prior to asserting a patent or seeking a