Inter Partes Review – A Fair and Efficient Litigation Alternative

IPRWith special thanks to my co-author, Laura Sheridan of Google, the linked article takes a detailed look at the first two years of inter partes review practice before the Patent Trial and Appeal Board and seeks to provide insights into some of the most critical areas of the proceedings. Like all change, the implementation of IPR has caused considerable commentary from both supporters and critics. There can be no denying, however, the overwhelming popularity of the proceedings as an alternative to litigation. As the article points out, while the proceedings are not perfect, the statistics and facts underlying IPRs makes clear that they are, at least, fair.

The article is re-published with permission from the Association of Corporate Counsel (http://www.acc.com).

Patent Public Advisory Committee 2014 Annual Report

8457034_sThe Patent Public Advisory Committee issued its Annual Report regarding fiscal year 2014. The PPAC Report contains a number of interesting points, but our review, of course, will focus on the PTAB and post grant proceedings. The PPAC’s review of post grant proceedings started off with a review of numerous key statistics, including:

  • The Board comprised 214 judges at the end of FY 2014;
  • Of the petitions filed, 71.6% were directed to electrical/computer software patents, 15.6% were mechanical patents, 6.8% were chemical, 5.6% were biotech/pharma, and 0.4% were design patents;
  • 2,082 total petitions have been filed since the inception of the AIA, with a peak of 190 petitions filed in June of 2014;
  • The Board has issued final written decisions in 129 IPR proceedings and 13 CBM proceedings;
  • The 1,494 Petitions filed in FY 2014 made the Board the second busiest patent jurisdiction behind only the Eastern District of Texas (1,511 Complaints) and just ahead of the District of Delaware (1,335 Complaints); and
  • For ex parte reexamination buffs, the Board affirmed or affirmed-in-part 67% of appeals, reversed 30%, and remanded or dismissed 3%.

Another interesting aspect of the PPAC Report was its recommendations to the PTO. First, the PPAC recommended continued vigilance in hiring new judges or otherwise handling the increased AIA workflow. Second, the PPAC suggested that the Board not be reluctant to exceed the one-year, statutory timeline for post grant proceedings. And, third, the PPAC recommend that the USPTO become more flexible in claim amendment practice to make them more available to patent owners.

The PPAC was formed as part of the American Inventors Protection Act of 1999 to advise the Director of the PTO on the management of patent operations. The Committee reviews the policies, goals, performance, budget, and user fees of the patent operations and advises the Director on these matters.

Twenty-One Months of Inter Partes Review – By the Numbers

IPR InsertWelcome to Volume 6 of our IPR-PGR Quarterly Report.  This Report brings news of a large spike in Petition filings and some interesting trends that come from a more significant data set derived from Final Written Decisions. Also, we are still waiting on our first PGR filing.

First, after a brief respite last quarter, Petition filings rose to an all time high of about 30/week. This is higher than expected, but a portion of the spike is attributable to an interesting battle playing out between Patent Owner Zond, LLC, and a number of defendants in co-pending litigation. In the last two months, over 60 IPR petitions have been filed against Zond patents!

Second, as more Final Written Decisions have been rendered, the landscape does not look as bad for Patent Owners. The cancelation rate dropped from 96% to about 69%. Also, the last quarter brought our first granted Motions to Amend. It seems the Board has stopped adding requirements to what it takes to succeed in such motions, and Patent Owners have adjusted enough to see some success. These Patent Owner successes are helping change the narrative and establish that IPR proceedings are not only efficient and cost-effective, but also fair.

Thank you for your continued interest in Harness Dickey’s Post Grant Practice. Please email us at IPR-PGR@hdp.com if you have any questions about our Report or any other aspect of IPR proceedings.

6 Reasons Inter Partes Review Was Popular in 2013

Happy New Year 2014 replace 2013 concept on the sea beachOriginally Published in IP Law360

A look back on 2013 reveals that one reform enacted under the America Invents Act – Patent Office Litigation – has perhaps had the most immediate and dramatic impact.  While many predicted that Inter Partes Review (IPR) proceedings would change the face of patent litigation, few could have predicted the intense momentum and wide-spread acceptance these proceedings have gained in such a short time.  Indeed, as of December 5,  2013, 723 IPR petitions have been filed, averaging more than 20 petitions/week.

IPR proceedings have, of course, maintained many of the advantages over district court litigation that were found in reexamination proceedings, such as lower cost (often by an order of magnitude), lower burden of proof (preponderance of the evidence versus clear and convincing evidence), and a potentially broader claim construction (broadest reasonable interpretation versus ordinary and customary meaning).  This article focuses on the advantages, both expected and unexpected, that are unique to Inter Partes Review practice (and likely will to Post Grant Review (PGR) practice).  Overall, patent challengers are flocking to these proceedings because of the great advantages provided by them to challenge the patentability of US patents.  Discussed below are the six (6) key reasons why IPR proceedings have become so popular:

Greater Control Over Prior Art

IPR and PGR proceedings give patent challengers more comfort that Patent Owners will not be able to mislead the Patent Office via, for example, infirm evidence.  To that end, patent challengers no longer are forced to sit idly by as patent owners submit expert declarations seeking to uphold patentability, or otherwise offer evidence that cannot be assailed.   For example, the rules governing IPR and PGR proceedings allow for evidentiary challenges (pursuant to the Federal Rules of Evidence) as well as depositions of declarants.

In addition, patent challengers are afforded an opportunity to address the Patent Trial and Appeal Board at an oral hearing near the end of the trial.  To date, most such hearings have allowed each party one hour of argument (orders granting such oral hearings have ranged from ½ hour to 2 hours per side).  While the vast majority of a patent challenger’s case is fully set forth in the petition and accompanying exhibits, the oral hearing gives patent challengers a chance to address questions raised by the Board, as well as to summarize the extensive briefing that has occurred up to the hearing.  Such hearings are helpful mechanisms under the new Patent Office litigation procedures to encourage patent challengers to forego district court litigation and place their best prior art before the Patent Office.

Shorter Timelines and More Litigation Stays

Unless an IPR proceeding is an exceptional case, IPRs are supposed to be concluded within 18 months from filing the petition request grant thereof.  Comparing that to the median time to trial period of 30 months for district court litigation clearly makes the IPR option attractive based on timelines alone.  Add to that the apparent willingness of district judges to stay concurrent litigation in view of a corresponding IPR and you have a powerful opportunity.  In general, the fact that the estoppel that is imposed upon patent challengers (any grounds that were raised or could have been raised) arises at a date certain, no more than 18 months after a petition has been filed, provides district court judges with strong rationale for staying litigation.  To that end, judges have often cited the reasonable length of time that a litigation could be stayed, as well as the fact that the IPR will simplify issues in the litigation as appropriate grounds for a stay.  Essentially, either the patent claims will be rendered unpatentable, effectively ending the litigation, or the patentability of the claims will be affirmed (including by way of amendment) and validity issues at the district court will be significantly streamlined by virtue of the estoppel placed on defendant.

One particularly telling example of the district court’s willingness to grant stays in view of IPR comes from a district court judge from the District of Delaware in a case involving Kyocera (defendant/patent challenger) and Softview LLC (plaintiff/patent owner).  Kyocera Corp. v. Softview, LLC, (IPR2013-00004).  During the district court litigation, Kyocera filed a petition seeking reexamination of the Softview patent.  Despite that reexamination petition being granted, the district court judge decided not to stay the co-pending litigation.  Later, after IPR became available, Kyocera filed a petition seeking inter partes review of the same patent.  A later motion to stay was accepted by the same Court, this time finding that speed of IPR, versus reexamination, and the ability to narrow issues for trial favored a stay.

Limited Opportunity for Patent Owners to Amend Challenged Claims

Another downside to reexamination practice that limited its acceptance by potential patent challengers, was the opportunity for patent owners to counter any reexamination filing with dozens, if not hundreds, of amended patent claims.  This concern was initially set forth in the America Invents Act itself, wherein Congress directed the Patent Office to draft regulations that allowed a patent owner to “propose a reasonable number of substitute claims.”  35 USC § 316(a)(9).  This directive was, indeed, set forth in the regulations implementing IPR and PGR, but taken to a whole new level with the now ubiquitous decision of Idle Free Sys. V. Bergstrom, IPR2012-00027 (Paper 26).  In the Idle Free decision, as colored by subsequent Board decisions, a proposed substitute claim must distinguish over: 1) the prior art known to patent owner (not just the art of record in the proceeding), 2) any other substitute claim proposed for the same original claim, and 3) any other substitute claim proposed for an original claim that, for the same reasons as the other substitute claim, is presented as patentable over the prior art (i.e., a second amendment to a dependent claim, wherein the substitute claim also contains a first amendment that is the same as presented in another substitute claim).

In addition, any proposed amendments must be accompanied by specific citations to the original patent disclosure, explaining how the claimed subject matter as a whole is found, claim construction of new claim terms, and expert testimony confirming the above, among other technical details.  In short, far from the extensive amendment practice that had become endemic in reexamination practice, motion to amend practice in IPR and PGR proceedings will be much more limited.  Through one year of IPR proceedings,  patent owners proposed only six (6) amended claims per proceeding on average.

It is worth noting a few other key Motion to Amend cases that have been handed down by the Board, as well:  Nichia Corp. v. Emcore Corp., IPR 2012-00005, Paper 27 (regarding the burden of identifying written description support for proposed substitute claims); ZTE Corp. v. ContentGuard Holdings, Inc., IPR2013-00136, Paper 31 (burden of patentably distinguishing over prior art), for example.

Limited Opportunity for Parties to Take Discovery

The statute and rules contemplate three types of discovery: Mandatory Initial Disclosures (37 CFR §42.51(a)); Routine Discovery ((37 CFR §42.51(b)(1)); and Additional Discovery (37 CFR §42.51(b)(2)).

Mandatory Initial Disclosures is a misnomer, because these disclosures are not mandatory at all, but only occur if there is an agreement of the parties, which must be submitted no later than the filing of the Patent Owner’s Preliminary Response.   37 CFR §42.51(a)(1)).  Thus, a party can avoid Mandatory Initial Disclosures simply by refusing to agree to it.  As a result, Mandatory Initial Disclosures have occurred in only a few of the Inter Partes Reviews filed.  See, Microsoft Corp. v. SurfCast, Inc., IPR2013-00292, Paper 17 (August 26, 2013); Microsoft Corp. v. SurfCast, Inc., IPR2013-00293, Paper 12 (August 26, 2013); Microsoft Corp. v. SurfCast, Inc., IPR2013-00294, Paper 13 (August 26, 2013); Microsoft Corp. v. SurfCast, Inc., IPR2013-00295, Paper 12 (August 26, 2013); Oracle Corporation v. Click-to-Call Technologies LP, IPR2013-00312, Paper 12 (August 23. 2016).

Routine Discovery is cross-examination of any affidavit testimony.  (37 CFR §42.51(b)(1)(ii)).  This discovery can proceed without requiring specific authorization from the Board.  Unless otherwise agreed by the parties, a party must serve copies of any exhibits cited in a paper or in testimony 37 CFR §42.51(b)(1)(i)) as well as relevant information that is inconsistent with a position advanced by the party during the proceeding (37 CFR §42.51(b)(1)(iii)).

Additional Discovery is any other discovery that a party might want to take.  In the absence of agreement, the party seeking additional discovery must file a motion with the Board demonstrating that the additional discovery is in the interests of justice.   37 CFR §42.51(b)(1)(iii).  In Garmin Int’l Inc. v. Cuozzo Speed Technologies, LLC,  IPR2012-00001, Paper 26 (March 5, 2013),  the Board identified five factors it considers in deciding whether to grant additional discovery:

1. More Than A Possibility And Mere Allegation — The mere possibility of finding something useful, and mere allegation that something useful will be found, are insufficient to demonstrate that the requested discovery is necessary in the interest of justice. The party requesting discovery should already be in possession of evidence tending to show beyond speculation that in fact something useful will be uncovered.

2. Litigation Positions And Underlying Basis — Asking for the other party’s litigation positions and the underlying basis for those positions is not necessary in the interest of justice. The Board has   established rules for the presentation of arguments and evidence.  There is a proper time and place for each party to make its presentation. A party may not attempt to alter the Board’s trial procedures under the pretext of discovery.

3. Ability To Generate Equivalent Information By Other Means – Information a party can reasonably figure out or assemble without a discovery request would not be in the interest of justice to have produced by the other party. In that connection, the Board would want to know the ability of the requesting party to generate the requested information without need of discovery.

4. Easily Understandable Instructions — The questions should be easily understandable. For example, ten pages of complex instructions for answering questions is prima facie unclear. Such instructions are counter-productive and tend to undermine the responder’s ability to answer efficiently, accurately, and confidently.

5. Requests Not Overly Burdensome To Answer — The requests must not be overly burdensome to answer, given the expedited nature of Inter Partes Review. The burden includes financial burden, burden on human resources, and burden on meeting the time schedule of Inter Partes Review. Requests should be sensible and responsibly tailored according to a genuine need.

Applying these factors, the Board has denied all but a few requests for additional discovery.  The Board has explained that the limited discovery available in IPRs is “significantly different from the scope of discovery generally available under the Federal Rules of Civil Procedure” and “restricts additional discovery to particular limited situations, such as minor discovery that PTO finds to be routinely useful, or to discovery that is justified by the special circumstances of the case.”  The “interests of justice” standard is a high standard, that, to date, has been rarely satisfied, so additional discovery in an IPR is the exception, not the rule.  This bodes well for even broader acceptance of the IPR option going forward, because it is often the extremely wide latitude on the amount of discovery allowed and the easily extended deadlines available under district court litigation that prolongs the litigation and raises the cost.

Detailed Claim Construction Analysis Provided By Board at Decision to Initiate Stage

Early predictions that inter partes review proceedings may function as a mini-claim construction phase are proving to be prophetic.  Many of the Board’s decisions to initiate an IPR trial (or deny a petition), have resulted in detailed, comprehensive claim construction analyses that will ripple through any co-pending or future patent litigation.  37 CFR 42.104(b)(3) requires a petition to identify how a challenged claim is to be construed.  While a Petitioner is entitled to generically articulate the “broadest reasonable interpretation” standard to satisfy this requirement, Petitioners are cautioned to think carefully about this approach.  The Board has rejected petitions for failing to identify a proposed claim construction for key claim terms and, for petitions that survive an initial review, the Board has criticized petitioners for failing to identify specific claim construction positions.  See, e.g., Avaya, Inc. v. Network-1 Security Solutions, IPR2013-00071, Paper 18 (agreeing that a key term should have been addressed in the petition, but not rejecting the petition on that ground because the failure was harmless, given that Patent Owner did not articulate a reason why the failure was material).

Also interesting regarding the Board’s claim construction analyses are both its adherence to the same type of claim construction analysis as that performed by the federal courts, but its willingness to give no weight to prior claim construction rulings, including from the Federal Circuit.  Google, Inc. v. Whitserve LLC, IPR2013-00249, Paper 11.

In the end, by providing thoughtful and detailed claim construction analyses in inter partes review proceedings, the Board has given patent challengers an avenue to a streamlined and inexpensive first look at the claim construction of patent claims.  Because this efficient claim construction analysis may impact litigation positions, including later Markman proceedings, this is another impactful feature of IPR proceedings that have made them popular over the past year.

Reconsideration of Old Arguments Made During Examination or Prior Reexamination

The standard for declaring an Inter Partes Review is clear: the petitioner must establish “a reasonable likelihood that the petitioner would prevail with respect to at least one challenged claim” before an IPR will be declared.  Gone is the requirement that the challenger present a substantial new question of patentability.  Thus, whereas roughly 65% of the petitions filed to date have relied on at least some previously cited prior art; only about 35% of the petitions filed relied entirely on newly cited prior art.  Less than 1% of all petitions filed to date have relied exclusively on previously cited prior art.

Although 35 U.S.C. §325(d) provides that the Board “may take into account whether the same or substantially same prior art or arguments previously were presented to the [Patent and Trademark] Office,” the fact that the prior art was previously submitted to or even considered by the Patent and Trademark Office has not stopped the Board from initiating a trial.

In Macauto U.S.A. v. BOS GmbH & KG, IPR2012-00004, Paper 18 (Jan. 24, 2013), the patent owner argued that inter partes review was improper because the same prior art and the same arguments were raised in a prior reexamination.  The Board said that “we are not required by statute to reject a Petition based upon the fact that certain arguments or art were previously considered by the Office,” although the Board did go out of its way to point out that the record before it was not the same as previously before the Office.

In Bitmax Advanced Biofuels LLC v GEVO, Inc., IPR 2013-00214, Paper 11 (September 30,2013), the Board again rejected a  patent owners argument that same prior art and substantially the same arguments were considered by the Examiner during the prosecution of the patent.   The Board found that petitioner’s arguments with respect to the asserted prior art “have merit,” and that petitioner “has demonstrated a reasonable likelihood that the prior art references render the challenged claims unpatentable.”

In K-40 Electronics v. Escort, Inc., IPR2013-00203, Paper 6 (August 29, 2013), the Board found  that the declaration antedating references accepted by the Examiner during prosecution was deficient, and instituted trial based upon art that the Examiner determined was not prior art.

It is clear that where the petitioner shows a reasonable likelihood of success, the Board will likely grant a trial even if the prior art or the arguments had been previously considered.

Conclusion

Provided the US Patent Office is able to retain and hire enough Patent Trial and Appeal Board judges to keep up with well qualified demand and still meet the attractive 18 month from petition filing timeline, for at least the reasons highlighted above, IPRs and soon too PGRs could very well become the norm rather than the exception for patentability and validity challenges going forward.

35 for 37: Partial Victory for Patent Owner As Board Puts Some, But Not All, Claims into IPR Trial

iStock_000013398807XSmallIn recent decisions, the Board has had a soft spot for Patent Owners.  Shortly after denying only the second petition for inter partes review, as previously discussed, only 29 of 40 challenged claims were put into an inter partes review trial in the case styled MicroStrategy, Inc. v. Zillow, Inc. (IPR2013-00034), involving US Pat. No. 7,970,674.

The ‘674 patent is directed to the field of electronic commerce techniques related to real estate. The ‘674 patent discloses an approach where valuing homes is responsive to owner input, allegedly resulting in a more accurate, inexpensive, and convenient valuation.

The Board first addressed a claim construction dispute between the parties involving the term “user knowledge about the distinguished home.” Patent Owner advocated a narrower construction limited to “the owner or a person with equivalent knowledge to the owner,” apparently trying to avoid prior art references directed more towards agents. The Board was not persuaded.  Relying primarily on the specification, the Board determined that such a “user” could be any person “knowledgeable about the distinguished home” and was not limited to the owner.  Order at 9-10.  Relatedly, the Board went on to construe “owner of a home” and “new geographically-specific home valuation model” based primarily on the specification of the ‘674 patent.

Turning to the specific grounds of challenge, the Board first granted two anticipation grounds after rejecting Patent Owner’s arguments that one or more limitations was missing. A related obviousness challenge, based on the 102 reference in combination with an additional reference, was denied as redundant. Order at 13. It will be interesting to see what will happen if the Board is later convinced that the anticipating reference does not contain all claim limitations.  Given the Board’s reluctance to date to grant any rehearing request, maybe this possibility is extremely remote.

The Board next proceeded through analysis of the remaining obviousness challenge grounds. In some instances the Board found a reasonable likelihood of prevailing, but other times the Board was unpersuaded because of opposing arguments presented by Patent Owner in its Preliminary Response.  For example, for certain of the challenged claims, Patent Owner successfully argued that Patent Challenger’s combination of references still failed to disclose an element of the challenged claim. Order at 18-19.  On the flip side, grounds for other claims were granted where the Patent Owner “did not set forth any reason as to why [Patent Challenger’s] arguments were unpersuasive.” Order at 23, 25.

After completing its detailed obviousness analysis, the Board granted trial on some, but not all of the challenged patent claims. For some claims, the Board found Patent Challenger’s arguments to be more persuasive, but for other claims, Patent Owner’s silence in its Preliminary Response was deafening. Indeed, Patent Owner’s strong arguments that persuaded the Board to not grant some grounds seemed detrimental to Patent Owner’s interests with regard to other grounds.  That is to say, the Board treated Patent Owner’s silence as a kind of acquiescence to Patent Challenger’s arguments.

6 Months of Inter Partes Review – By the Numbers

Screen shot IPR Report
Welcome to the inaugural issue of Harness Dickey’s Report on Litigation Practice Before the United States Patent Office.  Our periodic Report provides insight on some of the over 100 characteristics of Inter Partes Review and Post Grant Review proceedings that we track to identify trends and strategies for our clients.

Are you facing threatened, pending, or anticipated patent litigation?  Walk into the strategy meeting armed with hard facts regarding this new procedure that will change the face of patent litigation.  For example, did you know that 96% of petitions seeking inter partes review were granted in the first 6 months of the procedure?  Further, 92% of the challenged claims from such petitions were included in the trial.  How about the fact that federal district courts are staying litigation in view of IPR filings at a 61% clip.

These are just some of the over 100 categories of inter partes review and post grant review practice that we are tracking and have included in our first issue of our Report.  A copy of the Report can be found by clicking HERE.  Please contact us at IPR-PGR@hdp.com if you would like a hard copy of the Report or would like more information about litigation before the USPTO.

PTAB Refuses to Stay Inter Partes Review in View of Settlement Talks

The Patent Trial and Appeal Board spoke in unambiguous terms recently in deciding that it could not stay inter partes review proceedings, even if both parties agree, in view of the congressional mandate imposed upon the Board to complete IPR trials in a timely manner.  Anova Food, LLC v. Leo Sandau, et al. (IPR2013-00114).

The parties in Anova had informed the Board that settlement negotiations were ongoing and that, to ensure the parties’ full attention could be focused on those settlement discussions, the parties requested a 2-month stay of the IPR.  The Board, however, clearly felt hamstrung by the time constraints imposed upon it by the America Invents Act stating, in rather unambiguous terms, that “there is a congressional mandate to timely complete inter partes review proceedings, and thus it could not stay the proceeding.” 35 USC §316(a)(11).

In line with the flexible nature the Board has adopted with inter partes review proceedings, however, it worked with the parties to fashion what appears to be an acceptable compromise.  That is, to provide the parties with breathing room, the patent owner was provided an additional two months to file its patent owner preliminary response – giving it a total of five months to file versus the default of three months.  To make up for that two month extension, each party agreed to shorten its response time for future IPR filings – the patent owner agreeing to file its response to the petition, if it were ultimately granted, within two months versus the standard three-month deadline; the patent challenger agreeing to file its reply regarding the petition within two months, as well, versus the standard three-month deadline.

In the end, it seems the Board will be unrelenting regarding the congressional directive to timely complete inter partes review proceedings.  It remains to be seen whether this holding was based solely on the facts of this case, or if other factual scenarios might convince the Board to stay an IPR proceeding under different circumstances.

Another Motion to Stay Reexamination Granted in Inter Partes Review

One of the goals of this site is to provide a comprehensive, one-stop-shop, for all “inter partes review” Orders issued by the Board.  While the rationale for staying a pending reexamination in view of an IPR relating to the same patent has been covered in past posts (for example, HERE), for the sake of completeness, we briefly note here that another reexamination proceeding has been stayed in view of an inter partes review.

Specifically, in a pair of Orders issued in Motorola Solutions v. Mobile Scanning Technologies (IPR2013-00093), the Board decided not to join an ex parte reexamination and inter partes review that were directed at the same patent.  Instead, the Board chose to stay the reexamination in view of the IPR.

The motion for joinder was based on a concern by the patent challenger that separate proceedings could result in different claim constructions, examinations based on incomplete information, and inconsistent amendments or arguments made with respect to the patent-in-issue.  While the Board was sympathetic to these concerns, it decided that merging the two proceedings could complicate and delay the inter partes review.

Instead, the Board granted the concurrent motion to stay the ex parte reexamination in view of the IPR.  As has been its practice, the Board gave a nod toward the general rule that it will not ordinarily stay a reexamination in view of an inter partes review.  But, the Board then went on to, again, stay the co-pending reexamination because the decision to institute an IPR, and any final written decision relating thereto, will simplify issues in the reexamination. Only time will tell if the Board actually decides not to stay a co-pending reexamination in view of an IPR.

What is in your Inter Partes Review Claim Chart?

The claim chart has been a fixture of Patent Office post-grant practice, let alone federal court litigation, and inter partes review should be no different.  As has become a theme in inter partes practice, however, strict adherence to the Patent Office regulations is paramount in these proceedings, and the venerable claim chart has not avoided the glare of the Board.

In the case of Xilinx, Inc. v. Intellectual Ventures I, LLC (IPR2013-00112), the Board convened a conference call to discuss defects in the petition filed by Xilinx.  In the end, the Board accepted the petition, but made clear that the petition was flawed because it contained defective claim charts.  Specifically, the Board slapped Xilinx’s wrist because the claim charts contained analysis that went beyond the process of identifying key features of a claim and comparing those features with specific evidence.

The Board’s position is interesting because it is unclear where the Board derived the basis for its strict objection to the claim charts.  The Trial Practice Rules (at 48764) state that claim charts are not required, but that they may be filed to “explain clearly and succinctly what the petitioner believes a claim means in comparison to something else, such as another claim, a reference or a specification.”  The Rules go on to explain that such charts may streamline the process of identifying key features of a claim and comparing those features with specific evidence.  Of course, this latter language is what was cited by the Board in its conference call and subsequent Order, but there is nothing in the rule that would seem to prohibit including analysis in the claim chart.  There also is little to help us discern what types of “analysis” were troublesome to the Board.

Our best guess is that the Board is concerned about the page limitations that are imposed on petitions.  The inter partes rules state that a claim chart may be single-spaced, despite the requirement that a petition must otherwise be double-spaced.  If a petitioner were to include a significant amount of analysis and argument in the claim chart, instead of a succinct comparison of claim language versus specific evidence, this would help a petitioner to avoid the strictures of the page limitation.

The Mechanics of Motions to Amend in Inter Partes Review

As the first inter partes review trials head toward the deadline for a Patent Owner Response and potential Motion to Amend, the focus of the earliest trials is starting to turn to the mechanics of a Motion to Amend.  In addition to the Trial Practice Rules, the Board provided some guidance for motions to amend in an Order relating to the “Conduct of the Proceeding” in the first-filed inter partes review, Garmin Int’l v. Cuozzo Speed Tech. (IPR2012-00001).

Starting first with the applicable rules, motions to amend, like all motions, must comply with §42.22 “Content of petitions and motions.”  Specifically, a motion to amend must be filed as a separate paper and include: 1) a statement of the requested relief, 2) full statement of reasons for that relief, 3) any showings required by the rules for inter partes review, 4) a statement of material facts, and 5) any other showings or explanations required by the Board as a condition for authorizing the motion.  In addition, pursuant to §42.24(a)(v), the motion to amend must not exceed 15 pages.

[pullquote align=”left|center|right” textalign=”left|center|right” width=”30%”]§42.121(a)(3) – “A reasonable number of substitute claims.  A motion to amend may cancel a challenged claim or propose a reasonable number of substitute claims.  The presumption is that only one substitute claim would be needed to replace each challenged claim, and it may be rebutted by a demonstration of need.”[/pullquote]

Motions to amend the patent-at-issue must also comply with §42.121 “Amendment of the patent.”  Pursuant to this regulation, one motion to amend is allowable, after conferring with the Board. Typically, such conferring occurs during the initial conference call that occurs shortly after institution of the inter partes review.  The due date for a motion to amend is no later than the filing of a Patent Owner Response.  The scope of the motion to amend must be limited to a response to a ground of unpatentability involved in the trial.  Further, no amendment may enlarge the scope of a claim or introduce new subject matter.  Lastly, the motion to amend must identify where in the disclosure of the patent the support for any amendment is located.

What is sure to be the most controversial portion of Rule 121 is the requirement that only a reasonable number of substitute claims be offered in a motion to amend.  As compared to reexamination practice, where unlimited numbers of claims could be offered, inter partes review rules state that there is a presumption that only one substitute claim is needed to replace each challenged claim.

In the Garmin case, the Board took the opportunity of a conference call, and subsequent order, to emphasize many of the above-requirements, including instructing the patent owner regarding the following:

  • Any proposed amendment or substitution of claims must explain how it obviates the grounds of unpatentability underlying the institution of the inter partes review;
  • Any proposed amendment or substitution of claims must explain where corresponding written description support in the specification can be found;
  • Such explanations should be contained in a motion to amend claims, which is separate from the Patent Owner Response; and
  • The motion to amend should not make any change to claims not involved in the proceeding.

While amending claims that are subject to inter partes review is an advantage to a patent owner, that advantage has been severely limited, as compared to the amendment practice common in reexamination proceedings.  Most particularly, it will be interesting to see how the Board handles the presumption of one substitute claim per challenged claim.  Given the Board’s strict reading of the Trial Practice Rules to date, however, patent owners should not expect much leeway regarding the number of claims proposed.