In Western Digital Corp v. SPEX Tech, the PTAB provides guidance on motion to amend practice in inter partes review (IPR) proceedings at the Patent Trial and Appeal Board (PTAB). IPR2018-00082, Paper 13 (PTAB Apr. 25, 2018). Western Digital provides important guidance in view of the Federal Circuit’s en banc decision in Aqua Products, Inc. v. Matal, 872 F.3d 1290 (Fed. Cir. 2017), which held that the petitioner bears the burden of persuasion to demonstrate the unpatentability of substitute claims presented in a motion to amend.

In view of Aqua Products, the PTAB de-designated as precedential MasterImage 3D, Inc. v. RealD Inc., Case IPR2015-00040, Paper 42 (PTAB July 15, 2015) and de-designated as informative Idle Free Sys., Inc. v. Bergstrom, Inc., Case IPR2012-00027, Paper 26 (June 11, 2013). MasterImage and Idle Free have been removed from the PTAB’s listing of Precedential and Informative Decisions.

The PTAB designated Western Digital as an informative decision on June 1, 2018. Western Digital sets forth guidance on several aspects of motion to amend practice, including 1) contingent motions to amend, 2) the burden of persuasion, 3) the reasonable number of substitute claims, 4) responding to a ground of unpatentability involved in the trial, 5) scope of the claims, 6) claim listing, 7) default page limits, and 8) duty of candor. These issues are discussed below.

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