The majority noted:In Proxyconn, we affirmed the Board’s denial of thepatentee’s motion to amend because it failed to show thatits proposed substitute claims were patentable over “priorart of record”—namely, a reference that the Board usedas grounds for instituting review of claims other thanthose sought to be amended. 789 F.3d at 1303–08. Weexplained that the Board’s interpretation of its regulationsin denying the proposed amendment was reasonableunder the particular circumstances in Proxyconn and wasconsistent with the United States Patent and TrademarkOffice’s (“PTO’s”) position expressed in the Board’s informativedecision in Idle Free Systems, Inc. v. Bergstrom,Inc., IPR2012–00027, 2013 WL 5947697 (PTAB June 11,2013). Proxyconn, 789 F.3d at 1307. However, we expresslydeclined to decide in Proxyconn whether the PTO’sadditional guidance about the patentee’s burden in IdleFree also…
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