PTAB Provides Guidance on Motions to Amend

Since the Federal Circuit’s complicated, 5-opinion decision regarding motion to amend practice in inter partes review proceedings, we have been awaiting developments that will teach us what life in a post-Aqua Products world will look like. We received our first such development in a memorandum from the Chief APJ, David Ruschke, providing “Guidance on Motions to Amend in view of Aqua Products.”

At threshold, the PTAB’s guidance starts with the only true holding from the Aqua Products case, that the burden of proving patentability no longer should be placed on Patent Owners. Practically speaking, this shift in burden to the Petitioner seems to eliminate the burdensome hurdles to a successful motion to amend that the PTAB has developed in its decisions, starting with Idle Free

Instead, a Patent Owner must only meet the requirements of 35 U.S.C. § 316(d) and 37 C.F.R. § 42.121 (IPR)/42.221 (PGR). Below is a checklist of the requirements from those sources that should lead to a motion to amend that is considered on the merits by the PTAB:

  • Patent Owner must confer with the Board before presenting a Motion to Amend;
  • The Motion to Amend must be filed no later than the filing of a Patent Owner Response;
  • The Motion to Amend must only propose a reasonable number of substitute claims (the presumption being that only one substitute claim would be needed to replace each challenged claim);
  • Any amendment(s) to the claim(s) must respond to a ground of unpatentability involved in the trial;
  • The amendment(s) must not enlarge the scope of the original claims;
  • The amendment(s) must not introduce new matter, including:
    • Setting forth the support in the original disclosure for the patent for each claim that is added or amended; and
    • Setting forth the support in an earlier-filed disclosure for each claim for which the benefit of the filing date of the earlier filed disclosure is sought;
  • The Motion to Amend must contain a claim listing, clearly showing any changes (such listing may be presented as an appendix to the motion); and
  • Patent Owner must comply with its duty of candor, including providing the PTAB with any information of which Patent Owner is aware that is material to the patentability of the substitute claims (if such information is not already of record).

If these requirements are met, the Board will determine patentability by a preponderance of the evidence, based on the entirety of the record, including any opposition by the Petitioner.

Lastly, it is notable that, for pending Motions to Amend, the PTAB’s guidance indicates that the Board “generally will permit” supplemental briefing regarding patentability, if requested.

We can see the new Motion to Amend frontier taking shape. Now it’s onto the first PTAB decisions and (probably) on to the Federal Circuit another time or two.

Aqua Products: Amendments in IPR Proceedings Come Roaring to the Forefront

Have you noticed the momentum of Federal Circuit decisions trending against the PTAB and petitioners? If not, today’s long-anticipated decision in the Aqua Products case will change your thinking. Albeit in a self-described “narrow” ruling, the rules for amending patent claims in post-grant review proceedings just took a sharp turn towards patent owners. The Federal Circuit reversed the Board’s practice on motions to amend, finding that it is the petitioner, not the patent owner, who bears the burden of persuasion regarding the patentability of proposed substitute claims presented in a motion to amend.

The Court’s detailed, 66-page opinion (accompanied by 4 additional concurring and dissenting opinions) provides a detailed analysis of the history of motions to amend and the burden of persuasion that applies in IPR proceedings. Further, the Court provides a detailed analysis of the deference (or lack thereof) that is required by Chevron.

Despite the dozens of pages of analysis, Judge O’Malley provides a concise summary of the Court’s holding:

As frustrating as it is for all who put so much thought and effort into this matter, very little said over the course of the many pages that form the five opinions in this case has precedential weight. The only legal conclusions that support and define the judgment of the court are: (1) the PTO has not adopted a rule placing the burden of persuasion with respect to the patentability of amended claims on the patent owner that is entitled to deference; and (2) in the absence of anything that might be entitled deference, the PTO may not place that burden on the patentee. All the rest of our cogitations, whatever label we have placed on them, are just that—cogitations. Order at 65-66.

So where do we go from here? Patent Owners will still be required to establish the basic requirements of 35 U.S.C. § 316(d); that is, that the amended claims are non-broadening, supported by the specification, and responsive to a ground already at issue in the IPR. From there, petitioner must act fast to obtain expert testimony, new art, and/or persuasive arguments to meet its burden of proving that the substitute claims are not patentable. In the end, the PTAB has the job of weighing the totality of the record before it to determine if the petitioner has met its burden of proving the substitute claims are unpatentable.

But, we may not have seen the end of the battle on motions to amend. Judge O’Malley’s opinion also makes clear that a new rule, shifting the burden of persuasion to the patent owner, may be implemented, but only after engaging in a notice and comment rule-making. “At that point, the court will be tasked with determining whether any practice so adopted is valid.” Order at 66.

Stay tuned: the PTAB has issued other opinions that can be argued to be rule-making by a PTAB panel (like the motion to amend rules from Idle Free that were addressed in Aqua Products). Practitioners will be on the lookout for ways to replicate the Aqua Products formula and require a more thorough notice and comment procedure for the finer details of IPR practice.

Federal Circuit Demonstrates Willingness to Rein in PTAB’s Onerous Idle Free Rules Regarding Claim Amendments

cafc1Patentees have been generally frustrated with the Board’s unwillingness to grant motions to amend. The Board’s Idle Free case, and its progeny, have added a number of requirements to a motion to amend that are above and beyond the simple requirements set forth in the IPR implementing statute. While the Federal Circuit has, generally, stated that the Board can, via decisions like Idle Free, define the characteristics of IPR proceedings, some of those requirements are beginning to fall by the wayside. Another requirement was knocked down by the Court today in Veritas Techs. v. Veeam Software (August 30, 2016). No longer must a patentee show that added claim elements in a motion to amend are, individually, inventive over the known prior art.  The Federal Circuit’s rebuke of the Board on this point  gives patentees more hope for future amendments.

The Veritas IPR involved a patent covering systems and methods for restoring computer data.  As a first line of defense, the patentee argued for a narrow claim construction in an effort to avoid the prior art.  That argument was rejected by both the Board and the Federal Circuit, with citation to the broadest reasonable construction claim construction standard.  As a second line defense, the patentee presented a conditional motion to amend which explicitly added the patentee’s claim construction argument to the claims.  The Board also rejected that motion, a ruling the Federal Circuit characterized as “based on its insistence that the patent owner discuss whether each newly added feature was separately known in the prior art.”  Specifically, the Board had faulted the patentee for discussing only “the newly added features in combination with other known features.”  The Federal Circuit held that position to be arbitrary and capricious and thus in violation of the Administrative Procedure Act.

Specifically, the Court found several instances in the record where the patentee (or its expert) explained that prior art systems did not contain the newly added features.  The Court could “not see how the Board could reasonably demand more from Veritas,” particularly in light of the “long line of Supreme Court and Federal Circuit cases (including KSR) which note “that novel and nonobvious inventions often are only a combination of known individual features.”  In light of that precedent, the Court “fail[s] to see how describing a combination is meaningfully different from describing what is new about the proposed claims, even in comparison to the unamended claims.”

As a final note, the Court explained the recent grant of en banc rehearing in In re Aqua Products (concerning the allocation of burdens in IPR amendment practice) did not affect the issue in this case.  The Court thus remanded instead of waiting for the decision in Aqua Products.

Federal Circuit Provides Guidance on Motions to Amend in IPR

cafc1In Nike v. Adidas, the Federal Circuit today gave patent owners in IPR the beginnings of a roadmap for how to successfully amend claims in an IPR. Readers of this blog will know by now that the PTAB rarely grants motions to amend, and that the Federal Circuit has shown little inclination to make the PTAB more generous in granting such motions.

Previous appeals from a denial of motion to amend have focused on the legal standard that the PTAB applies when evaluating amendments. Microsoft Corp. v. Proxyconn Inc., 789 F.3d 1292, 1305 (Fed. Cir. 2015) (“Proxyconn argued that because DRP was not one of the references over which the PTO had instituted review… the Board exceeded its authority under § 42.121(a)(2)(i) to deny substitute claims…”); Prolitec Inc. v. ScentAir Techs., 807 F.3d 1353, 1363 (Fed. Cir. 2015) (“Prolitec argued that it did not have the burden to establish patentability over prior art references cited in the patent’s original prosecution history because they are not prior art of record in the IPR,”); Synopsys Inc. v. Mentor Graphics, slip op. at 25 (“Mentor argues that Proxyconn does not control because [it] did not address whether the patentee ought to bear the burden to distinguish all prior art known to the patent owner and whether this requirement is contrary to 35 U.S.C. § 316(e),”). By contrast, Nike spent less time challenging the standard that the PTAB applies, and more time simply explaining why its substitute claims are patentable over the art at issue. Because the Federal Circuit could not affirm the PTAB’s obviousness conclusions, it remanded the case back to the PTAB, directing the PTAB to reconsider the motion to amend in view of the defects in the PTAB’s obviousness analysis.

The take-home message here is that if you want the Federal Circuit to grant your motion to amend, you should focus on why your substitute claims are patentable over the art in the case. Do not focus on whether the PTAB is applying an incorrect standard for evaluating when amendments are proper, because the PTAB’s standards will be evaluated under very deferential Chevron review.

A last important point to note here is that Adidas asked the Federal Circuit to deny the amendment because Nike had included a single sentence in its motion asserting that the new claims were “patentable over prior art known to Nike, but not part of the record of the proceedings.” The PTAB concluded that this was facially inadequate, and that having acknowledged that it knew of art not already of record, Nike was obliged to discuss such art before the motion could properly be granted. The Federal Circuit explicitly disagreed with this conclusion. Rather, the Federal Circuit held that “we cannot see how the statement used by Nike would be inadequate, absent an allegation of conduct violating the duty of candor.” Because there were no allegations in this record that Nike had violated its duty of candor, the Federal Circuit held that Nike’s failure to discuss other art cannot be a ground on which to deny the motion to amend. This is good news for patent owners, because it means that valuable page limits do not need to be consumed discussing non-record art.

Federal Circuit Weighs in on 3 Aspects of IPR Proceedings in Synopsis v. Mentor Graphics

cafc1Today in Synopsys Inc. v. Mentor Graphics, the Federal Circuit answered several new questions about the PTAB’s duties and the Federal Circuit’s powers of review during and after an inter partes review.

The first—and perhaps most significant—issue in this appeal was whether the PTAB must give a decision regarding all claims that the petitioner challenges. In this case, Synopsys had challenged 19 of Mentor Graphics claims in US 6,240,376, but the PTAB only instituted review on 12 of those claims, and only found 3 of those to be unpatentable in the final written decision. Synopsys appealed, arguing not only that the nine surviving should be held unpatentable, but also that the PTAB was statutorily obliged to address the seven claims on which IPR had not even been instituted. The logic of Synopsis’ argument is that 35 U.S.C. § 318(a) provides that the PTAB “shall issue a final written decision with respect to the patentability of any patent claim challenged by the petitioner… .” Synopsys reasoned that because it had challenged 19 claims, the PTAB was obliged to rule on 19 claims, even if the PTAB had only granted review on 12 claims. The majority opinion—authored by Judge Dyk—dismissed this argument because even Synopsys admitted that it would make little sense to have the PTAB pass on claims about which a full record had not been developed. The majority opinion also noted that § 314(a) speaks of “claims challenged in the petition,” while § 318(a) speaks of a “claim challenged by the petitioner.” The majority cited Bailey v. United States, 516 U.S. 137, 146 (1995) for the proposition that when Congress uses two different phrases, this suggests that the two are to be given different meanings (likening “challenged by the petitioner” and “challenged in the petition” to “used” and “intended to be used” in Bailey).

In other words, the majority held that both the plain text of the statute and common-sense considerations regarding statutory purpose favor the PTAB being only obliged to pass on claims for which IPR was instituted. The majority also noted that even if the statutory text had been ambiguous, Congress had committed the implementation of the America Invents Act (AIA) trial procedures to the USPTO’s expertise, so the USPTO’s implementing regulations are entitled to Chevron deference. The USPTO interprets its regulations as not requiring final decisions regarding claims on which IPR was never instituted, and this is further reason why Synopsys’ appeal fails. This is yet another case showing the Federal Circuit’s great deference to the USPTO’s decisions about how IPR trials are supposed to work. See, In re Cuozzo Speed Tech., 793 F.3d 1268, 1279 (Fed. Cir. 2015); Ethicon Endo-Surgery v. Covidien LP, 2016 U.S. App. LEXIS 473 at *23 (Fed. Cir. Jan. 13, 2016).

Another Synopsys argument for why all challenged claims need to be addressed in one IPR is that IPRs are supposed to resolve invalidity contests concerning documentary prior art (i.e., patents and printed publications) quickly and efficiently. If the PTAB may address some challenged claims but not others, this frustrates the Congressional intention to bring an expedited resolution to novelty/obviousness issues. The majority held that there is “no inconsistency” between the intended efficiency and the piecemeal nature of the PTAB’s review here, because the statute plainly contemplates the possibility of novelty/obviousness contests in both an IPR and a corresponding district court trial (e.g., where some invalidity contentions are based on documentary prior art, and others are based on prior public use). This drew a vigorous dissent from Judge Newman, who made it clear that she thinks that an IPR is supposed to be something that one does instead of—not in addition to—litigating novelty/obviousness in court.

A second interesting question at stake in this case was whether Mentor Graphics should have been allowed to enter a substitute claim set. Just as in the overwhelming majority of AIA trials in which the patent owner seeks to amend, the PTAB refused the proposed amendments. The Federal Circuit has twice affirmed the USPTO’s regulations regarding amendments in IPRs. Microsoft Corp. v. Proxyconn Inc., 789 F.3d 1292, 1303 (Fed. Cir. 2015); and Prolitec Inc. v. ScentAir Techs., 807 F.3d 1353, 1363 (Fed. Cir. 2015). Mentor Graphics attempted to distinguish these cases on the logic that neither had squarely addressed the issue of whether the USPTO’s approach to IPR amendments is consistent with the statutory provision (35 U.S.C. § 316(e)) that “the petitioner shall have the burden of proving a proposition of unpatentability,” (emphasis added). The majority was not impressed with this argument, and noted that § 316(e) begins with the introductory phrase “[i]n an inter partes review instituted under this chapter… .” The majority considered that “instituted under this chapter” means that the only claims for which the petitioner must prove unpatentability are the claims on which review was initially granted. Because Mentor Graphics’ substitute claims were not in the case at the time of institution, the burden allocation in § 316(e) does not apply to Mentor Graphics’ substitute claims. Once again, Judge Newman dissented from this part of the opinion, just as she had done in Prolitec, 807 F.3d at 1365.

Finally, the last interesting question at stake in this case was whether district court review of an IPR decision is available under the Administrative Procedures Act (APA). As this blog recently noted, this question has not been definitively answered, but what little evidence we have suggests that APA review is not available. Synopsys had filed parallel proceedings—challenging the PTAB’s decision not to review all 19 challenged claims—before both the Federal Circuit and the U.S. district court for the Eastern District of Virginia. The district court dismissed this challenge because it concluded that the AIA strips courts of jurisdiction to hear APA challenges to IPR decisions. The Federal Circuit held that because its own ruling here disposed of all the same issues that were at stake in the APA challenge before the district court, that the APA appeal was moot. Therefore, the Federal Circuit dismissed the APA appeal and vacated the district court’s ruling on the subject. Judge Newman also dissented from this holding. Judge Newman considered that the district court was correct—i.e., that the AIA really does strip courts of the authority to hear APA challenges to IPR decisions—and that the district court’s ruling should be affirmed, not vacated. In other words, while the subject of APA review remains technically an open question, this case stands as further evidence that APA review is not available from IPR decisions.

Federal Circuit Weighs in on IPR Again, and Judge Newman Regains Her Footing as Pro-Patent Crusader

cafc1The Federal Circuit issued another substantive, IPR-related opinion today in Prolitec, Inc. v. ScentAir Techs., Inc., 2015-1020 (Fed. Cir. Dec. 4, 2015) (appealing from IPR2013-00179). The Board had determined that each of the two claims at issue was unpatentable and the Federal Circuit affirmed. On appeal, Patent Owner made five challenges to the PTAB’s decision in the underlying IPR – three claim construction arguments, a related argument against anticipation, and an argument directed to its Motion to Amend in the IPR. It is worth discussing here one of the claim construction arguments, the Federal Circuit’s treatment of the Motion to Amend, and a broad-based and strong dissenting opinion filed by Judge Newman.

Regarding claim construction, Patent Owner argued that the term “mounted” was not properly construed to require a permanent joining of two parts. In support, Patent Owner pointed out that the purpose of the invention was to provide a disposable cartridge for one-time use and that each embodiment in the patent required a permanent means of bonding. The Federal Circuit disagreed. As to the purpose of the invention argument, the Court cited to broad language from the specification, that taught that “it may be desirable that the cartridge is configured to be used only one time prior to being discarded.” Op. at 5. The Court specifically noted that “[t]he problem for [Patent Owner] is that the use of ‘may’ signifies that the inventors did not intend to limit the patent as [Patent Owner’s] expert opined.” Id. at 5-6. As to the fact that each embodiment required permanent bonding, the Court pointed to more permissive language which taught that the two parts “may be jointed to each other by heat or ultrasonic welding spin welding, or by use of an adhesive.” Id. at 6 (emphasis in original).

In short, this is another example of a situation where the blind pursuit of breadth in the drafting of the patent specification hurt a Patent Owner by requiring that its patent claim(s) be construed broader than what was likely necessary to cover the commercial embodiment of the invention. The prior art seemed to show non-permanent joining of the key parts and, as such, if Patent Owner intended the patent-at-issue to cover permanent joining, it should have made that point of novelty clear in the specification and/or the patent claims.

Regarding the Motion to Amend, Patent Owner had attempted to substitute “permanently joined” into the subject claims, substituting its above-referenced claim construction for the claim element. Petitioner opposed, pointing to a reference in the prior art (cited in the original examination of the patent) that taught permanent joining. Patent Owner did not dispute that the subject prior art reference disclosed that limitation, but argued that other claim limitations were not found in the reference. The Board denied the Motion to Amend, finding that Patent Owner failed to demonstrate that the proposed claim was patentable. On appeal, Patent Owner made two arguments that came up short. The first argument was that it was not required to prove patentability over prior art references cited in the original file history because they were not of record in the IPR. This was an issue that was left open by the Federal Circuit in Microsoft v. Proxyconn789 F.3d 1292 (Fed. Cir. 2015). In that case, the Court had indicated that it was not deciding on the reasonableness of the Board’s jurisprudence regarding the scope of the requirement that Patent Owner show patentability over all “prior art of record” (which, at the time, arguably required a showing of patentability over the entire universe of uncited prior art). Op. at 14. Subsequent to the Federal Circuit’s decision in Proxyconn, the PTAB narrowed its guidance on what constituted “prior art of record” to include material contained in the prosecution history of the patent-at-issue. The Federal Circuit agreed with the Board’s approach in this regard, finding that the Patent Owner’s burden to show patentability over the art from the original prosecution history “is not in conflict with any statute or regulation. Moreover, it is not unreasonable to require patentee to meet this burden.” Id. As such, the Board’s denial of the Motion to Amend was affirmed.

Lastly, Judge Newman seemed to return to her pro-Patent Owner role, after signing onto the decidedly pro-Petitioner decision in Belden v. Berk-Tek, by filing a broad and strong dissentSpecifically, Judge Newman disagreed with the majority’s decision in five ways. First, she argued that the PTAB improperly refused entry of the amendment-at-issue, given that Patent Owner had complied with all the statutory and regulatory requirements. Judge Newman’s view is that the proposed amendment resolved the key dispute in the proceeding about claim breadth and, as such, “refusal to enter the amendment is contrary to both the purpose and the text of the America Invents Act.” Dissenting Op. at 3. Second, Judge Newman disagreed with the majority regarding the burden of proof for amended claims. It was not proper, per the dissenting opinion, for the Board and majority to shift the burden for amended claims to Patent Owner. Instead, the AIA places the burden of proof, throughout the proceeding – for amended and unamended claims – on Petitioner. Third, Judge Newman argued that it is the Federal Circuit’s duty to assure that the preponderance of the evidence standard is met in PTAB proceedings. As such, it is erroneous to apply the highly-deferential substantial evidence standard to AIA post-grant appeals. Fourth, Judge Newman criticized the majority opinion for not remanding the case to the Board given that the PTAB changed its view of the scope of “prior art of record” during the pendency of the case.

Lastly, Judge Newman took issue with the majority’s affirmance of the anticipation finding in view of the fact that the anticipatory reference was Patent Owner’s prior incarnation of the subject device. Per Judge Newman: “A finding of anticipation requires that the same invention was previously known and described, not that a claim can be construed so broadly and incorrectly as to embrace a prior art device.” Id. at 11.

Judge Newman is back to her old self, but another Patent Owner has found its patent rights in rubble.

PTAB Highlights Motion to Amend Decision

iStock_000017878764XSmallAnother day, another key decision from the PTAB. This time, the Board has highlighted a Motion to Amend opinion entered in MasterImage 3D, Inc. v. RealD, Inc., IPR2015-00040, decided by six Administrative Patent Judges.

At threshold, the Board commented that Patent Owner’s request for a telephone conference to discuss its Motion to Amend (a requirement under 37 CFR 42.121) should have been requested earlier. The Board suggested that such conferences should be requested at least 10 business days before the due date for the motion.

Turning to the meat of the opinion, the Board pointed out that its decision was crafted to make three points of clarification relative to the requirement of the ubiquitous Idle Free decision regarding Motions to Amend. More specifically, the decision was directed to what was required for Patent Owner to show patentable distinction over the prior art of record and prior art known to the patent owner.

First, the Board pointed out that “prior art of record” is: a) material art in the prosecution history; b) material art in the current proceeding; and c) material art of record in any other proceeding before the Office involving the patent.

Second, the Board explained that “prior art known to the patent owner” should be understood as 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. In that light, a Patent Owner should place initial emphasis on the limitation(s) added to the claim in the Motion to Amend. Notably, the Board pointed out that information about the added limitation can be material even if it does not include all of the rest of the claim limitations.

Third, the Board made clear that, once Patent Owner has set forth a prima facie case of patentability for its narrower substitute claims over the prior art, the burden of production shifts to Petitioner. At that point, Petitioner can: a) explain why no prima facie case of patentability has been made, or b) rebut that prima facie case by addressing Patent Owner’s evidence and arguments and/or by identifying and applying additional prior art against the proposed substitute claims. Patent Owner will have, of course, the right to respond in its reply brief. The ultimate burden of persuasion remains with Patent Owner to demonstrate patentability.

Lessons From the Rare Grant of an IPR Motion to Amend

19377657_sAlthough many Patent Owners have complained about the high hurdles for amending claims in an IPR, the Board’s decision in Riverbed Technology, Inc. v. Silver Peak Systems, Inc. IPR2013-00403 shows that the requirements are not impossible to meet.  In Riverbed, the Patent Owner filed a motion to amend which cancelled all existing claims, and proposed six amended claims. The Board found the Idle Free factors to be met as to two of the six proposed amended claims.  This case also illustrates the value in presenting well-grounded arguments (which the Petitioner is unable or unwilling to challenge), as opposed to arguments that stretch the facts.

(1)  No Broadening of Claim Scope.  The Board noted that Patent Owner’s substitute claims contained all limitations of an original claim and only added further limitations, meaning that the claim scope was not enlarged.  (In fact, the amendments were substantial, taking nearly a page of the Board’s decision to reproduce.).  Notably, the Petitioner did not dispute this point.  Decision at 12.

(2)  Provide Written Description Support. Patent Owner identified support in the original application (referring to paragraphs in the application, not column/line numbers in the issued patent) as to each added limitation of the substitute claims.  Here again, Petition did not dispute that the limitations had written description support.  The Board found that Patent Owner met Idle Free’s written description requirement.  Id. at 12-13.

(3)  Provide Claim Interpretation of New Claim Terms.  Patent Owner provided a table showing three new claim terms, and corresponding broad constructions based on description and figures in the ‘583 specification.  Patent Challenger did not argue that the proposed constructions were incorrect.  The Board agreed with Patent Owner’s proposed constructions, and further adopted the same construction for previously-interpreted claim terms.  Id. at 13-15.

(4) Demonstration of Patentability.   Patent Owner gave a detailed account of known processes (known to the Patent Owner, not just art of record) in the art similar to the substitute claimed process, and even pointed to Patent Challenger’s declaration and references relied upon as examples of the “old” process.  Patent Owner then identified how the new limitations of the substitute claims distinguished over the known process.  Id. at 16-19.  In fact, Patent Owner’s arguments as to claims 28 and 30 were essentially unrebutted by Petitioner.  Id. at 25.  Finally, Patent Owner addressed the knowledge of the ordinary artisan.  Patent Owner pointed again to the new limitations of the substitute claims, and explained how even the strongest art-of-record brought forth by Patent Challenger did not suggest that the specific process defined by the substitute claims was within knowledge of the ordinary artisan at the time of invention.  Id. at 20-22.  Further, Patent Owner provided explanation of how its substitute claimed process solved a problem in the art and was superior to the known process in arguing for nonobviousness.  Id. at 22-24.  The Board thus granted two of the proposed amended claims.

As to the other four proposed claims, though, the Board found Petitioner’s analysis lacking insofar as it failed to show a patentable distinction over the parent claims (the two granted amended claims) or for failure to propose a claim construction for means-plus-function limitations.  The Idle Free test remaining an exacting one.

Proposed Claims in IPR Motions to Amend Can Now Be Placed in Appendix

iStock_000017878764XSmallThe PTAB recently sent out an email alert, directing practitioners to its order providing guidance on Motions to Amend in Corning Optical Comm. RF, LLC v. PPC Broadband, Inc., IPR2014-00441, Paper 19. The Order stemmed from the required “conferral” with the Board regarding a motion to amend, 37 CFR § 42.121(a), and is surely another response from the Board in response to criticism that only one Motion to Amend has been granted to date.

In general, the Board set forth, again, a listing of all the many requirements of a Motion to Amend. Those requirements are reviewed below. What is unique about this Order, and surely the reason it was set forth separately in the PTO alert, is the fact that the Board authorized Patent Owner to place its proposed substitute claims in an appendix, such that it did not count against the 15-page limit for motions to amend. This has been a sore subject with Patent Owners who were otherwise forced to cram all the requirements of the Idle Free decision, and its progeny, along with a listing of the proposed claims, within the 15-page motion to amend. Assuming this is a trend by the Board, this will be welcome to Patent Owners who are have been clambering for a more fair opportunity to address all the many requirements of these motions.

By way of review, we set forth the other requirements of a Motion to Amend that were reiterated in the Order:

  • Proposed substitute claim should be responsive to the ground of unpatentability applicable to the original claim for which it is a substitute;
  • A claim listing is required, including each proposed substitute claim (with any claim having a changed scope included);
  • The proposed substitute claim must be traceable back to the original claim it is intended to replace;
  • If more than one substitute claim is required for a particular claim, the motion should articulate a special circumstance to justify the request;
  • The motion must show clearly the changes of the proposed substitute claim vis-a-vis the original claim (i.e., brackets for deleted text; underlining for inserted text);
  • Patentability must be shown, in general, not merely over the references applied against the original claims;
  • Written description support must be shown for each proposed substitute claim (citing to the original disclosure and showing support for the entire claim, including demonstrating disclosure in any intervening applications);
  • If a new term is proposed, the meaning of which reasonably can be anticipated as subject to dispute, the Patent Owner must provide a proposed claim construction (citation to “plain and ordinary meaning” is viewed as unhelpful – what that meaning is must be provided);
  • Sufficient underlying facts should be provided regarding the proposed added feature, including whether it was previously known anywhere, in whatever setting, and whether it was known in combination with any other elements of the claim (if known, the motion must show why it was not obvious);
  • Patent Owner must reveal what it knows about the new feature (i.e., including a discussion of the ordinary skill in the art, with a particular focus on the feature added, such as a specific discussion about the technical knowledge pertaining to the added feature, whether there are textbooks or conventional practices relating to the feature, and what basic skill set would be possessed by one of skill); and
  • Make a showing regarding the co-pendency and common-inventor requirements of 35 USC § 120 with respect to each ancestral application in the chain of priority applications.

An Overdue Discussion of the PTABs Grant of the First IPR Motion to Amend

17624885_sIt is hard to explain how this post, discussing the first ever granted Motion to Amend in an inter partes review, sat in “draft” mode for over 5 months. This is especially perplexing given the difficulty Patent Owners are experiencing relating to the issue of amending claims in an IPR. But, in a way, the decision has become even more remarkable in the months that have passed since it issued on May 20, 2014, because no other Motion to Amend has been granted. So, today we finally address International Flavors & Fragrances, Inc. v. The United States of America, as Represented by the Secretary of Agriculture, IPR2013-00124, wherein the Board granted the first (and still only) Motion to Amend in the over two years of inter partes review. So….what went right for the US Government given how the amendment process has gone so wrong for every other Patent Owner?

After the Petition by IF&F was filed, Patent Owner (the US Government) did not contest the grounds set forth in the Petition, instead conceding the unpatentability of the challenged claims and filing a Motion to Amend Claims. This motion proposed amended claims 27-45. Order at 2. Of perhaps critical importance in this decision, Petitioner did not oppose the Motion to Amend, leaving the Board by itself to decide the patentability of the amended claims solely on the record presented in the Petition and Motion to Amend.

Following the precedent of Idle Free Sys., Inc. v. Bergstrom, Inc., IPR2012-00027, at 33 (PTAB January 7, 2014 (Paper 66)), the Board noted that in a Motion to Amend, the Board bears the burden of demonstrating patentability of the proposed claims over the prior art in general to be entitled to the proposed amended claims.  Id. at 7. To that end, the Board first determined that the proposed claims were not broadening and had written description support. Id. at 9-10.

The Board then turned to the issue of patentability over the prior art, a hurdle that no other Patent Owner had before, or has since, negotiated. By way of background, the patent-at-issue relates to a new compound useful as an insect repellent. Patent Owner proposed 18 amended claims – 2 independent claims (claims 27 and 45) and 16 dependent claims (that all depended from claim 27). Claim 27 amended an original claim by specifying a Markush group from which the claimed analog was to be selected. Claim 45 added that the claimed repellent is applied against ticks or mites.

Interestingly, the Board first remarked that Patent Owner only addressed the the art presented in the Petition and identified one of those references as the “apparent” closest prior art. More specifically, Patent Owner argued that “Substitute independent claim 27 is patentable over the cited references, of which Behan appears to be the closest known prior art, because the cited references do not disclose or suggest that….” This is the type of conclusory statement that has sunk many previous Patent Owners. See, e.g., Toyota Motor Corp. v. Am. Vehicular Sciences LLC, IPR2013-00419, Paper 32, at 4 (PTAB Mar. 7, 2013) (“Explaining patentability over references applied by the petitioner against the original patent is not the main event.”).

Here, though, the PTAB decided that the US Government had sufficiently demonstrated, beyond the conclusory statement, that “the level of ordinary skill in the art, as well as providing evidence regarding what would have been understood by the ordinary artisan as to those features being relied upon to demonstrate the patentability of the proposed claim.” Order at 12. Specifically, the Board noted evidence that explained that small changes in structure can result in significantly different properties in the chemical compound. As such, because the prior art did not provide a reason to modify the parent compound to arrive at the members of the Markush group of new claim 27, nor did the art provide a reasonable expectation that such modifications would result in a compound having the desired insect repellent activity, the preponderance of the evidence supported the patentability of proposed claim 27. Id. at 15. Notably absent, however, was any explanation why, in this case, a failure to go beyond the art cited in the petition was sufficient, when that has not been the case for many other patent owners.

Because claims 28-44 all incorporated the limitations of claim 27, they were found patentable for the same reasons. Id. 

The Board did reject claim 45 that, as mentioned, sought to claim the use of the parent compound for ticks and mites, because the same compound was shown in the prior art to be effective against cockroaches and mosquitoes. Id. at 17-18. The Board found that maxim that, merely discovery a new benefit of an old process does not render the process again patentable, was applicable here. Proposed substitute claim 45 was, therefore, denied.

When all of the Final Written Decisions that have denied Motions to Amend have been reviewed, it is difficult to come up with a firm understanding of why many other motions that did not discuss the art generally were denied, yet this motion by the US Government was granted. For example, at the the PTAB AIA Roundtable, the Board suggested that a certified prior art search, or some other good faith effort by the patent owner to tell the Board what it knows, especially about the added feature, is required. We are not sure that was done in this case, but the Board still granted the motion. Decide for yourself – the successful Motion to Amend Claims is HERE.