Patent attorney Bryan Wheelock spoke to Law360 about the Federal Circuit’s recent decision in Nike v. Adidas. The case is notable because it weighs the ability of the Patent Trial and Appeal Board to grant or deny proposed patent claim amendments based on more than the petitioner’s invalidity arguments alone. Wheelock previously wrote a blog post about Nike v. Adidas and its implication for PTAB proceedings.

The Federal Circuit ruled that the PTAB can, in fact, consider evidence in the record to help determine if a particular patent claim amendment should be rejected. If the PTAB does this, though, it must explain its reasoning to both parties and allow them to respond.

“No matter which side you’re on, I think people would agree this is what the court needed to do,” says Wheelock. “If the Federal Circuit prevented the board from looking over the record, then the most trivial amendment could bring a screeching halt to the Inter Partes Review process.”

If the PTAB had to rely on the petitioner’s invalidity arguments, which address the original claims rather than proposed amendments, then it might have to allow claims it does not believe are valid.

“Patent owners shouldn’t keep their patents in a way that’s not fair,” Wheelock adds.

The Federal Circuit decision agrees: “it makes little sense to limit the board, in its role within the agency responsible for issuing patents, to the petitioner’s arguments in this context.”

As to whether the PTAB can look outside the record of the IPR in devising a theory for rejecting an amendment, the Federal Circuit only said the present case did not present the issue and they reserve it “for another day.”

“I’m not in favor of turning the board into a bunch of examiners, but if they know something, it’s really hard to justify them not being able to use it,” says Wheelock, noting that it would make sense for PTAB judges to occasionally look outside the record as appropriate.

The Federal Circuit’s decision also remanded the case back to the PTAB so that the parties could have a chance to respond to the PTAB’s theory for why it rejected Nike’s proposed amendment on a textile upper before issuing a final decision.

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