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Feb 07

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.

§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.”

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.