Ten Key Board Decisions In 2015 – Part Two

In part two of this series, we continue to review the most important, or at least most interesting PTAB decisions of 2015. Part one can be found here.

6.) MasterImage 3D, Inc. v. RealD Inc., IPR2015-00040, Paper 42 (Jul. 15, 2015)

The Board designated its MasterImage Order as "representative" on the issue of motions to amend and clarified that the burden is on the Patent Owner to demonstrate that the proposed amendments are patentable over the prior art of record and also prior art known to patent owner. Citing Idle Free Systems, Inc. v. Bergstrom, Inc., IPR2012-00027, Paper 26, the Board defined "prior art of record" as "a) any material art in the prosecution history of the patent; b) any material art of record in the current proceeding, including art asserted in grounds on which the Board did not institute review; and c) any material art of record in any other proceeding before the Office involving the patent." The other category, "prior art known to the