IPRs are powerful tools for challenging the validity of issued patents. One tool that Congress included for patent owners responding to IPR petitions is the motion to amend, which in theory allows a patent owner to attempt to amend around the invalidity arguments of the petition. In practice, almost no such motions were ever successful. One exception to that rule was the Fish IP motion to amend in the Tire Hanger IPR filed by Shinn Fu. IPR2015-00208, Paper No. 15. At the time Shinn Fu appealed the initial Fish IP victory – when this issue was before the United States Supreme Court in another case – only six motions to amend had ever been granted. On appeal, the Federal Circuit generally sided with Fish IP’s client, but on a technicality remanded the matter for further proceedings before the PTAB so that the Board could formally address additional invalidity arguments from Shinn Fu.
On April 19, 2019, the Board granted again on remand from the Federal Circuit Tire Hanger’s motion to amend the challenged claims. IPR2015-00208, Paper No. 31. In so doing, the PTAB formally rejected all remaining invalidity arguments after noting the effect of the recent Aqua Products, Inc. v. Matal ruling from the Federal Circuit which prevented the Board from putting the burden to prove validity on the patent owner bringing a motion to amend.