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.