In November, Chief Judge David P. Ruschke of the U.S. Patent and Trademark Office's Patent Trial and Appeal Board issued a memorandum entitled "Guidance on Motions to Amend in view of Aqua Products" (see "PTAB Motions to Amend Post-Aqua Products -- Chief Judge Ruschke Issues Guidance"). The bottom line of this guidance was that the "practice and procedure before the Board will not change," except in the rare situation in which the "entirety of the evidence of record before the Board in in equipoise as to the unpatentability of one or more substitute claims." But how has Aqua Products impacted specific motions to amend? We received some indication in December when a three-judge panel granted-in-part a motion to amend in Taiwan Semiconductor Manufacturing Co. v. Godo Kaisha IP Bridge (IPR2016-01249). The Board in that case found that: (1) the motion to amend did not include an unreasonable number of substitute claims, (2) substitute claim 13 was not broader than the scope of the challenged claims, (3) claim 13 did not introduce new matter, and (4) claim 13 responded to a ground of unpatentability in the proceeding. The other two substitute claims, claims 11 and 12, were found to be unpatentable over the prior art of record because the newly introduced limitations were found to be "met by the very references asserted in the ground of unpatentability involved in" the IPR. APJ Michael J. Fitzpatrick joined this per curiam decision, but he wrote separately because he believed the decision should have informed which party bears what burden(s) with respect to the Motion to Amend.
IPR2016-01249 was directed to U.S. Patent No. 6,538,324, which "relates to a semiconductor integrated circuit including a copper wiring layer, and more particularly to a barrier film which prevents copper diffusion from such a copper wiring layer." Without going into the details, the only ground instituted in this IPR proceeding was that specific claims of the '324 patent were obvious over U.S. Patent No. 6,887,353 (Ding) in view of U.S. Patent No. 5,893,752 (Zhang). On December 20, 2017, the Board issued its final written decision in which it found that the petitioner had met its burden of showing the relevant claims would have been obvious over Ding and Zhang. However, the Patent Owner filed its motion to amend proposing substituting claims 11-13 for issued claims 5, 8, and 7, respectively. The Board pointed out that "[a] motion to amend must meet the requirements set forth in 35 U.S.C. § 316(d) and 37 C.F.R. § 42.121." However, it noted that Aqua Prods., Inc. v. Matal held that "[a] patent owner does not have a burden to prove its substitute claims are patentable under 35 U.S.C. §§ 102 and 103," although the Board pointed out that 35 U.S.C. § 318(a) still requires that patentability be an issue in deciding the motion.
One of the reasons that this case is noteworthy is the way that the Board handled substitute claim 13. Because it depended from substitute claim 11, we include both for reference:
11. (Substitute for claim 5) A multi-layered wiring structure comprising a barrier film which prevents diffusion of copper from a copper wiring layer formed on a semiconductor substrate,
said barrier film having a multi-layered structure of first and second films,
said first film being composed of crystalline metal containing nitrogen therein, the nitrogen being present throughout the first film,
said second film being composed of amorphous metal nitride,
said barrier film being constituted of common metal atomic species,
said first film being formed on said second film,
said first film in direct contact with said second film,
said first film containing nitrogen in a smaller content than that of said second film.
13. (Substitute for claim 7) The multi-layered wiring structure as set forth in claim [[5]] 11, wherein said first film has a thickness in the range of 60 angstroms to 300 angstroms both inclusive;
wherein said first film being composed of crystalline metal containing nitrogen therein is a solid solution; and
a copper film is formed on and in direct contact with said first film.
Interestingly, eight days before the final written decision, on December 12, 2017, the Board issued an Order suggesting that they "intend[ed] to grant the Motion to Amend with respect to claim 13 in a forthcoming final written decision." However, the Board indicated that this intent was conditional on the Patent Owner re-presenting claim 13 in independent form, and more importantly replacing each instance of "being composed of" with the phrase "consisting essentially of." This was because the Patent Owner had argued that the former means the latter. For whatever reason, the Patent Owner chose not file the additional requested paper. Nevertheless, the Board still allowed the substitution of claim 13 with the caveat that "[f]or purposes deciding the merits of the Motion to Amend as it relates to claim 13, [they] treated[ed] each instance of 'being composed of,' including those in claim 11 from which claim 13 depends, as Patent Owner asserts, to mean 'consisting essentially of.'" It will be interesting to see if other panels take a similar approach and provide guidance as to which claims might survive a Motion to Amend, and whether future panels will provide the Patent Owner with the opportunity to make changes to the proposed claims.
As indicated above, APJ Fitzpatrick joined the per curiam decision, but he wrote separately. He felt that the decision did not disclose who bears the burden(s), and therefore future "patent owners will be left guessing what their motion to amend must contain." Therefore, he would have explicitly held that: "the Motion to Amend is granted with respect to proposed claim 13 because Patent owner met its burden or production to show that claim 13 complies with the statutory and regulatory requirements for motions to amend, and because Petitioner did not meet its burden to prove by a preponderance of the evidence that claim 13 is unpatentable." In fact, he made clear that he would place the burden of production on petitioners because the statute and rule do not mention novelty, non-obviousness, or patentability generally (citing 25 U.S.C. § 316(d) and 37 C.F.R. § 42.121). Moreover, he indicated that he would also place the burden of persuasion on petitioners "because doing so is consistent with the most relevant statutory provision and there is no applicable rule requiring otherwise." There were two caveats to these rules. First, he believes that the burden on production should be on the patent owner to show that the written description requirement has been met, because (among other reasons) 35 U.S.C. § 316(d)(3) states that "[a]n amendment . . . may not . . . introduce new matter." Unfortunately, this statement may be at odds with the Federal Circuit's statement in Bosch Automotive Service Solution, LLC v. Matal, decided two days later on December 22, 2017, in which the Court indicated that petitioner bears the burden of proving all aspects of unpatentability "by a preponderance of the evidence." ("This burden of proof allocation applies to questions of indefiniteness, as with other questions of unpatentability. The second was that he would place the burden of production on the patent owner to establish that a substitute claim is responsive to an instituted ground of unpatentability.) This is based in his belief that Rule 42.20(c) was not overruled by Aqua Products, but that instead the Board's interpretation of the rule was as set forth in Idle Free and MasterImage. Instead, he expressed his belief that "Rule 42.20(c)'s application to motions to amend should be more closely tethered to the statute and rule that explicitly address motions to amend, i.e., § 316(d) and rule 42.121."
APJ Fitzpatrick also explained why putting the burden on the petitioner should not be a concern, even when it chooses not to oppose the motion to amend. He pointed out that instead of ending up with any potential claim, the Patent Owner will still be restricted by the statute. For example, "§ 316(d)(3) requires every substitute claim to be narrower than the challenged claim it is replacing." Therefore, the public benefits by the resulting narrowing of claim scope. In fact, § 316(d)(2) demonstrates Congress's belief that this is a public benefit, because it "permits parties to jointly request entry of a narrower claim to facilitate settlement."
Of course, APJ Fitzpatrick's comments are not part of the decision in this case. But they do at least shed some light on how on APJ is approaching motions to amend claims. And they may be indicative of how other APJs will address these issues. As a result, his concurrence may end up being the guidance that he believed Patent Owner deserved from any decision from Board on motions to amend.
