Lifting the Bar: Federal Circuit finds that the PTAB improperly allowed Amendments during IPR

US06681897-20040127-D00000Shinn Fu vs. Tire Hanger (Fed. Cir. 2017)

After receiving substantial criticism for refusing to allow claim amendments during Inter Partes Reviews (IPRs), the USPTO began to to relax its standards somewhat.  In this case, however, the Federal Circuit (C.J. Prost) has rejected the PTO’s expanded approach – holding that “the Board did not properly consider the arguments petitioner set forth in its opposition to the patent owner’s motion to amend.”

[16-2250.Opinion.6-29-2017.1][U.S. Patent No. 6,681,897][IPR2015-00208]

Tire Hanger’s patent covers a way of temporarily hanging a wheel that has been removed from a car on a mechanic’s lift.  Upon Shinn Fu’s request, the PTAB (acting on behalf of the Director) instituted the IPR and the patentee subsequently (and successfully) petitioned for an amendment to the claims in order to overcome the prior art.  Eventually, the PTAB agreed with the patentee that that amended claims were patentable — leading to this appeal by Shinn Fu.

In its decisions, the Board did not address Shinn Fu’s particular arguments regarding the reasons-to-combine the references and thus “did not meet its obligation here.”  Although the Board did generally address why it was not combining the references, it failed to particularly explain the problem’s with Shinn Fu’s arguments on that point.

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Perhaps the most important portion of the opinion comes in footnote 3.  There, the court writes about Shinn Fu’s reliance on additional references in its opposition – added after the amendment:

Although the Board faulted Shinn Fu for relying on additional references in its opposition, it is not surprising that it pursued this course of action in light of Tire Hanger’s amendments. In particular, those amendments added limitations that necessitate human involvement throughout the process. Indeed, the Board recognized this as the fundamental purpose of the amended claims in its Final Written Decision.

Although not a direct decision, the point from the court here is that an amendment by the patentee should likely open the door to allowing the patent challenger to add further references to its obviousness challenge.

 

 

20 thoughts on “Lifting the Bar: Federal Circuit finds that the PTAB improperly allowed Amendments during IPR

  1. Dennis –

    I suggest the absence of some words here: “In its decisions, the Board did not Shinn Fu’s particular arguments regarding the reasons-to-combine the references and thus “did not meet its obligation here.”

  2. Here at the EPO, during post-issue opposition, a distinction is made between i) an amendment to fold into claim 1 the content of a dependent claim (OK) and ii) adding to claim 1 a limitation pulled out of the specification (not always admissible. That’s because the former the Opponent can expect, and plan for, the latter not.

    Of course, this puts a premium on competent patent drafting, by which I mean, writing a decent set of dependent claims. Competent drafting (clear thinking about what is the invention) is more important than anything else ie worth more to the client than anything else. More than fancy litigators anyway.

    Is there any such premium (yet) in the USA.

    1. Yes in application prosecution, not necessarily in an IPR if the dependent claim was not petitioned against, because in that case the petitioner had no prior opportunity to apply prior art to it.

      1. because in that case the petitioner had no prior opportunity to apply prior art to it

        The petitioner has EVERY opportunity to apply prior art to it.

        The petitioner chooses what he petitions against.

        Aside from the fact that even in IPRs, there is the limit of “no new matter“… the whole line of thought here is most odd.

        No one is talking about dependent claims being amended into independent claims in the issues at present in the US sovereign.

        Yet another odd MaxDrei-ism at work.

  3. Hmmm….

    The case caption reads:

    JOSEPH MATAL, PERFORMING THE FUNCTIONS
    AND DUTIES OF THE UNDER SECRETARY OF
    COMMERCE FOR INTELLECTUAL PROPERTY
    AND DIRECTOR, U.S. PATENT AND TRADEMARK
    OFFICE,
    Intervenor

    Seems like a decidedly odd way of presenting a title of a person…

    (functional language and all… 😉 )

  4. You really have to see the amended claim (before and after) to believe what the patentee is attempting to do here. Absurd.

    The newly claimed “non-obvious” method is a method of hanging an object on a rod “without bending over.” The specific object here is a car wheel (OMG — you can hang car wheels?! Nobody ever did that before!) and the rod is attached to the lift that elevates the car.

    Wheels can hang from rods. You can hang objects from rods “without bending over” if the rod and the object to be hung are at waist height or higher. There is no teaching away in the art. There are no unexpected results. End of analysis.

    Stop wasting everybody’s time and money with this ridiculous junk, please.

    1. Tire Hanger’s patent covers a way of temporarily hanging a wheel that has been removed from a car on a mechanic’s lift.

      Right. There’s a rod on the lift and you hang the tire on it. That’s “the way.”

    2. I can tell you what was in the prior art 50 years ago because this is how was it often done in the garage where I worked: guy takes the tire off and — without bending over — he hands it to a helper guy who sets it somewhere (or hangs it). The problem to be solved is what to do if you don’t want to bend over and the helper guy isn’t around to take the tire from you. The most obvious solution is to have a tire hanger nearby. The nearest place to put the tire hanger is on the lift or on the car.

      For what it’s worth, if you can’t bend over with a car tire in your arms you probably shouldn’t be working in a garage.

      1. But if you forget to take a tire off of this rod on the lift before you lower the lift, it might well damage the tire and maybe also the lift. So that makes this idea unobvious, right?

        1. It looks to me like someone is going to forget its there and walk right into it…. maybe even poke an eye out…

          One of ordinary skill in the art would not have been motivated to place a sharp stick at about eye or heart level where a Teamster or UAW member might get impaled by or on it.

      2. We once again beseech thee to identify one patent in any field that does not claim something obvious in the view of Your Royal Arrogance.

      3. “For what it’s worth, if you can’t bend over with a car tire in your arms you probably shouldn’t be working in a garage.”

        Pardon me? Are you now advocating against the Americans with Disabilities Act and/or the Rehabilitation Act of 1973?

        Are you apposing the requirement for employers to make reasonable accommodations to allow disabled employees to perform the essential functions of the job?

        Where shall we have your letter of acceptance into the Republican Party delivered?

        1. Pardon me? Are you now advocating against the Americans with Disabilities Act and/or the Rehabilitation Act of 1973?

          The patent maximalists, folks. They’re very serious people!

          1. MM: “For what it’s worth, if you can’t bend over with a car tire in your arms you probably shouldn’t be working in a garage.”

        2. “Pardon me? Are you now advocating against the Americans with Disabilities Act and/or the Rehabilitation Act of 1973?”

          He’s an old school ableist reviled as the white cis hetero patriarch that he is by true lefties, even as he tries desperately to fit in.

                1. Thanks 6.

                  Not sure why this type of stuff gets deleted, yet Malcolm’s rants (far, far far worse) seem almost to have a huge welcome mat….

  5. Strangely, I did not see any mention or treatment in this decision of the pending Federal Circuit en banc rehearing of Aqua Products, Inc., No. 2015-1177, as to whether the PTAB’s rules requiring the Patent Owner to demonstrate the patentability of proposed amended claims are consistent with the statute permitting claim amendment during an IPR challenge, 35 U.S.C. 316(d) and (e)?
    Also, considering all the complaints as to the alleged impossibility of claim amendments in IPRs (including Cuozzo briefs), this is an amusing case of becoming “sorry to get what you had asked for.”

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