PTAB Grants Rare Motion To Amend

Unlike reexamination proceedings, inter partes review (IPR) proceedings rarely allow amendments to the claims to overcome a prior art invalidity challenge. In nearly all cases, the challenged claims of an IPR remain the same from start to finish. Recently, however, the PTAB allowed the patent owner to cancel all original claims of the patent in favor of five brand new claims never existing prior to the IPR.

The case of Shinn Fu Co. of America, et al. v. The Tire Hanger Corp., (Case IPR2015-00208, Final Written Decision, April 22, 2016) involves perhaps the most far reaching amendment ever allowed by the PTAB. Patent Owner Tire Hanger sued Shinn Fu, asserting each of the five claims of its patent. When faced with an IPR petition, Tire Hanger did not file a patent owner's response and in fact admitted the claims were "not patentable" in light of the prior art asserted in the petition. Instead, Tire Hanger moved the PTAB to allow an amendment that would add five