Another day, another key decision from the PTAB. This time, the Board has highlighted a Motion to Amend opinion entered in MasterImage 3D, Inc. v. RealD, Inc., IPR2015-00040, decided by six Administrative Patent Judges.

At threshold, the Board commented that Patent Owner’s request for a telephone conference to discuss its Motion to Amend (a requirement under 37 CFR 42.121) should have been requested earlier. The Board suggested that such conferences should be requested at least 10 business days before the due date for the motion.

Turning to the meat of the opinion, the Board pointed out that its decision was crafted to make three points of clarification relative to the requirement of the ubiquitous Idle Free decision regarding Motions to Amend. More specifically, the decision was directed to what was required for Patent Owner to show patentable distinction over the prior art of record and prior art known to the patent owner.

First, the Board pointed out that “prior art of record” is: a) material art in the prosecution history; b) material art in the current proceeding; and c) material art of record in any other proceeding before the Office involving the patent.

Second, the Board explained that “prior art known to the patent owner” should be understood as the material prior art that Patent Owner makes of record in the current proceeding pursuant to its duty of candor and good faith to the Office. In that light, a Patent Owner should place initial emphasis on the limitation(s) added to the claim in the Motion to Amend. Notably, the Board pointed out that information about the added limitation can be material even if it does not include all of the rest of the claim limitations.

Third, the Board made clear that, once Patent Owner has set forth a prima facie case of patentability for its narrower substitute claims over the prior art, the burden of production shifts to Petitioner. At that point, Petitioner can: a) explain why no prima facie case of patentability has been made, or b) rebut that prima facie case by addressing Patent Owner’s evidence and arguments and/or by identifying and applying additional prior art against the proposed substitute claims. Patent Owner will have, of course, the right to respond in its reply brief. The ultimate burden of persuasion remains with Patent Owner to demonstrate patentability.