In Masterimage 3D, Inc. v. Reald Inc., IPR2015-00040, Paper 42 (July 15, 2015), the Board instructed that patent owners seeking to amend their applications should still follow all of the requirements set forth in Idle Free Systems v. Bergstrom, Inc., IPR2012-00027, Paper 26 (June 11, 2013), but made three points of clarification:
First, the burden is not on the petitioner to show unpatentability , but on the patent owner to show patentable distinction over the prior art of record and also prior art known to the patent owner.(The Board further clarified that prior art of records includes all material art in the prosecution history of the patent, all material art in the current proceeding, including art from grounds not instituted, and material art of record in any other proceeding before the Office involving the patent.).
Second, the prior art know the patent owner is the material prior art that the patent owner makes of record in the proceeding pursuant to its duty of candor and good faith to the Office.
Third, once the patent owner sets forth a prima facie case of patentability of the amended claims, the burden shifts to the petitioner to show that the patent owner did not make a prima facie case, or to rebut the prima facie case.
No good news here for patent owners, the Board still has an expensive view of the prior art that should be addressed by the patent owner.