Absent an allegation of conduct violating the duty of candor, there is no heightened standard to establish patentability of substitute claims in an inter partes review over “prior art not of record but known to the patent owner.” Here, for example, the patentee’s mere conclusory statement in a motion to amend that its substitute claims were patentable over “prior art not of record but known to the patent owner” was found to be sufficient to satisfy the requirements of 37 C.F.R. § 42.20(c). “’[P]rior art known to the patent owner’ … should be understood as no more than the material prior art that Patent Owner makes of record in the current proceeding pursuant to its duty of candor and good faith.” It may therefore be acceptable to address the patentability of substitute claims over “prior art not of record but known to the patent owner” with a simple conclusory statement as long as all material prior art has been submitted to the PTO.
Background / Facts: The patent on appeal here from IPR proceedings at the PTO is directed to footwear. As part of a motion to amend, the patentee stated that its substitute claims were patentable over not only the art of record, but also “prior art not of record but known to the patent owner.”
Issue(s): Whether this conclusory statement is sufficient to satisfy the PTO’s interpretation of 37 C.F.R. § 42.20(c) as requiring the patent owner 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.”
Holding(s): Yes. “In this case, there is not, and there has never been, an allegation that [the patentee] violated its duty of candor. Moreover, the PTO acknowledged that [the patentee’s] statement about the substitute claims’ patentability over prior art not of record but known to [the patentee] would satisfy the obligation as explained in [the Board decision] MasterImage 3D. [] After MasterImage’s explanation of Idle Free, we cannot see how the statement used by [the patentee] would be inadequate, absent an allegation of conduct violating the duty of candor.” As the PTO recently clarified, “[t]he reference to ‘prior art known to the patent owner’ … in Idle Free, should be understood as no more than the material prior art that Patent Owner makes of record in the current proceeding pursuant to its duty of candor and good faith to the Office under 37 C.F.R. § 42.11, in light of the Motion to Amend.”