CAFC Partially Relaxes IdleFree Requirements For Amendments During IPR

Today in Nike v. Adidas (Fed. Cir. 2016), the Federal Circuit partially relaxed the hurdle for a patent owner to amend claims during an IPR or other AIA proceeding. This follows the PTAB's own earlier partial relaxation of the hurdle for patent owners to amend in its Masterimage decision (featured in an earlier post: "What Is the Latest on Amendments in PTAB Proceedings?"), in which the PTAB found that patent owners need not show patentability over all prior art in the universe, but only that known to the patentee. In today's Nike decision, the court found that it was error for the PTAB to have denied entry of Nike's amendment on the basis that Nike provided a conclusory statement that the proposed claims were patentable over prior art known to the patentee. The court stated: "we cannot see how the statement used by Nike would be inadequate, absent an allegation of conduct violating the duty of candor. We therefore conclude that this was an improper ground on which to deny Nike's motion to amend."

Insufficient fact-finding

The court also found error in the PTAB's decision to group two proposed claims together and not separately evaluate patentability due to distinct limitations. "This portion of the Board's analysis on whether Nike's proposal of claim 48 and 49 constituted a reasonable number of substitute claims for originally issued claim 19 lacks critical fact-findings needed for any obviousness determination. We are unable to engage in such fact-finding in the first instance and must therefore remand for further proceedings. See Ariosa, 805 F.3d at 1365 ('But we must not...