When Motion to amend is filed in IPR, Opponent can cite additional references.

Sadao Kinashi | July 18, 2017

Shinn Fu vs. Tire Hanger (Fed. Cir. 2017)

July 3, 2017

Before Prost, Reyna and Taranto. Opinion by Prost


This is an appeal from an inter partes review (IPR) of USP 6,681,897 (“’897 patent”).  The patentee filed a motion to amend.  Petitioner opposed to the motion and presented arguments of unpatentability adding new references.  The Board ignored Petitioner’s argument and granted the patent owner’s motion to amend and held the substitute claims patentable.

CAFC vacated and remanded holding that the Board did not properly consider the petitioner’s arguments in opposition to the Patentee’s motion to amend.




I.  Motion to Amend in IPR Proceeding

Tire Hanger (Patentee) owned ’897 patent describing a principal object and advantage of the invention as providing an improved wheel support apparatus that will not require workers to bend over while temporarily removing and replacing the wheels.

Shinn Fu petitioned for IPR of all five claims of the ’897 patent, proposing anticipation and obviousness grounds of rejection.  USPTO instituted on claims 1–5 over the references (a) to (d):

(a) Heidle (USP 5,813,659),

(b) AAPA (Applicant Admitted Prior Art),

(c) OSHA (OSHA Technical Manual),

(d) Komorita (JP Pub. H4-368261).

In response, Patentee filed a motion to amend, seeking to cancel claims 1–5 and substitute claims 6–10.  Patentee presented its arguments in view of the prior art upon which the USPTO based its institution decision and recently discovered prior art references not of record.

Petitioner opposed to the motion to amend, and presented unpatentability arguments with regard to the references Patentee identified in its motion and two additional references (e) and (f):

(e) Curran (USP 4,976,336),

(f) Conrad (USP 4,650,144).

After the parties presented oral argument, the Board concluded that the amended claims were patentable in light of the prior art of record and granted Patentee’s motion to amend.  Petitioner appealed.

II.  CAFC Decision

The issue is whether the Board erred by not adequately addressing Petitioner’s opposition to Patentee’s motion to amend.  CAFC reviewed the Board’s Decisions with the standard whether or not “arbitrary, capricious, an abuse of discretion, . . . otherwise not in accordance with law . . . [or] unsupported by substantial evidence. . . .” 5 U.S.C. § 706(2)(A), (E).

Petitioner faulted the Board’s Decision for providing a substantive analysis of the merits of Petitioner’s arguments.

On the other hand, Patentee faulted Petitioner for not addressing the analysis of the Board’s Decision and focusing instead on other combinations.  Patentee describes (e) Curran and (f) Conrad combination as one of many “ancillary issues” that Petitioner “only tangentially mentioned” in the first instance when opposing Patentee’s motion to amend.

CAFC concluded that the Board erred by ignoring the manner in which Petitioner proposed its obviousness combinations in opposition to Patentee’s motion to amend.  The Board’s failure here was arbitrary and capacious.

Throughout its analysis, Petitioner described various prior art references and, the particular manner in which to combine them.  Specifically, the combinations Petitioner proposed, including the combination of (e) Curran and (f) Conrad, involve modifying the prior art references by adding features from particular references together.

In contrast, the Board ignored Petitioner’s additive combination of the (e) Curran, (f) Conrad, (a) Heidle /(d) Komorita references even after describing Petitioner’s proposed combination as “the centerpiece of [its] argument.”

Because the Board did not provide any analysis regarding Petitioner’s key obviousness combination, CAFC had no meaningful way to review the Board’s patentability determination in light of Petitioner’s arguments.  The Board’s error here does not stem from its disregard for the teachings of any particular reference.

Although the law does not require that the Board address every conceivable combination of prior art discussed throughout an IPR proceeding, the Board does have an obligation to address the arguments that the parties present to it (here, Petitioner’s Curran-Conrad combination in opposition to Patentee’s motion to amend. It simply did not meet its obligation here. Accordingly, CAFC vacated the Board’s Final Written Decision and remanded consider Petitioner’s arguments based on the prior art combination of (e) Curran and (f) Conrad with (a) Heidle or (d) Komorita.


This decision is reasonable because claim amendment often necessitates additional prior art references.  This decision requires the Board to consider additional prior art references cited by Petitioner in response to Patentee’s motion to amend.

Full Opinion

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