Patent Board Can Allow New Arguments on Amended Claims, Even from Joined Parties

A recent decision highlights how the U.S. Patent Trial and Appeal Board (PTAB) handles motions to amend patent claims during inter partes review (IPR) proceedings, especially when new parties join the case. The dispute centered on U.S. Patent No. 8,441,438, which covers a three-dimensional pointing device, such as those used in smartphones to track motion and orientation. After the original IPR was filed by ZTE (USA), Inc., another company, LG Electronics Inc., joined the proceeding, even though its own petition would have been time-barred.

During the IPR, the patent owner, CyWee Group Ltd., tried to amend its claims to overcome prior art challenges. ZTE, the original petitioner, chose not to oppose these revised claims. LG, however, asked to step in and argue against the amended claims, citing new prior art references that ZTE had not raised. CyWee objected, arguing that LG, as a joined and otherwise time-barred party, should not be allowed to introduce new issues or evidence.

The Federal Circuit Court upheld the PTAB’s decision to let LG oppose the amended claims and bring in new arguments. The court explained that while IPRs are generally limited to the grounds raised in the original petition, this restriction does not apply when a patent owner introduces new claims through a motion to amend. In such cases, the Board must ensure that any new claims are fully examined for patentability, even if that means allowing new arguments or evidence from joined parties.

Ultimately, the court affirmed the PTAB’s finding that the amended claims were obvious in light of the prior art and rejected CyWee’s arguments about procedural unfairness. The decision clarifies that the PTAB has flexibility to ensure a thorough review of amended claims, even if it means letting joined parties take a more active role when the original petitioner steps back.

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