Author: Neelaabh Shankar, PhD
Editor: James D. Stein
Due to the high institution and claim cancellation rates since their inception in 2012, AIA post-grant proceedings have been viewed by many as favoring petitioners over patent owners. Though the playing field seems to be leveling somewhat more recently, petitioners overall continue to see better results than patent owners at the PTAB.
Some patent owners have complained of the difficulty of amending claims in AIA proceedings. Thousands of claims have been canceled, but this earlier this week the Board granted just its sixth motion to amend allowing substitute claims, in Shinn Fu Company of America and Shinn Fu Corp. v. The Tire Hanger Corp., IPR2015-00208, Paper 24 (Apr. 22, 2016). The difficulty to amend stems, in part, from the requirement to “persuade the Board that the proposed substitute claim is patentable over the prior art of record, and over prior art not of record but known to the patent owner.” Nike Inc. v. Adidas AG, 812 F.3d 1326, 1350 (Fed. Cir. 2016) (citing Idle Free Sys., Inc. v. Bergstrom, IPR2012-00027, 2013 WL 5947697 (PTAB June 11, 2013).)