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August 04, 2014 Articles

Amending Fences: Early Failures Amending Claims in Inter Partes Review

Despite the PTAB's denial of nearly all motions to amend, there are valuable lessons for patentees that can lead to better outcomes in the future

By P. Andrew Riley and Jonathan R.K. Stroud

Surprising many in the patent bar, the Patent Trial and Appeal Board (PTAB or Board) has denied nearly all motions to amend in inter partes reviews (IPR) and covered business method (CBM) post-grant reviews. Until May 20, 2014, the Board had granted motions only where the patent owner requested cancellation of claims. See, e.g., Motivepower, Inc. v. Cutsforth, Inc., IPR2013-00268, Paper 15, at 2 (P.T.A.B. Feb. 18, 2014); Intellectual Ventures Mgmt, LLC v. Xilinx, Inc., IPR2012-00020, Paper 34, at 2 (P.T.A.B. Feb. 11, 2014); Liberty Mutual Ins. Co. v. Progressive Cas. Ins. Co., CBM2013-00002, Paper 30, at 2 (May 17, 2013) (all granting a patent owner's motion to amend that requested cancellation of one or more claims at issue). Indeed, according to the Board, patent owners disclaimed 245 claims as of April 2, 2014. The Board's May 20, 2014, decision granted in part a motion to amend where the patent owner cancelled all 27 existing claims and filed an unopposed motion to amend. See Int'l Flavors & Fragrances Inc. v. United States, IPR2013-00124, Paper 12, at 2 (P.T.A.B. May 20, 2014). There, the Board allowed one proposed independent claim but rejected another. The Board also allowed all proposed substitute claims that depended from the first independent claim allowed. While the situation seems grim for patent owners, analyzing these decisions reveals strategies for improving the likelihood of a successful motion to amend.

Significantly, patent owners should keep in mind that "[a] motion to amend claims in an inter partes review is not itself an amendment." Nichia Corp. v. Emcore Corp., IPR2012-00005, Paper 68, at 49 (P.T.A.B. Feb. 11, 2014) (Emcore). Indeed, the Board views motions to amend as proposed "substitute" claims that will pass directly to issue if allowed. Emcore, IPR2012-00005 at 55; 35 U.S.C. § 326(a)(9) ("allowing the patent owner to move to amend the patent . . . to cancel a challenged claim or propose a reasonable number of substitute claims"); 37 C.F.R. § 42.121(a)(3) ("a reasonable number of substitute claims").

As a result, the patent owner's motion to amend should lay out the proper construction of the proposed new claims, the written description support for the new claims, and the features of the new claims that distinguish them from the prior art. The patent owner bears the burden of proof, see 37 C.F.R. § 42.20(c), and must show by a preponderance of the evidence that the proposed substitute claims are patentable. Int'l Flavors, IPR2013-00124 at 7. The Board's recent decisions on motions to amend also illustrate the importance of complying with the formal requirements and technicalities of applicable rules. By presenting a technically compliant motion setting forth what the new claims mean and why they are patentable, the patent owner greatly increases the chances of avoiding the dire fate met by nearly all other motions to amend.

Claim Construction

As the Board wrote in Emcore: "Claim construction is an important step in a patentability determination." Emcore, IPR2012-00005 at 51. Thus, any "motion to amend claims must identify how the proposed substitute claims are to be construed, especially when the proposed substitute claims introduce new claim terms." So, if presenting a new term—or even a new combination of terms—parties "should" probably provide a claim construction. Toyota Motor Corp. v. Am. Vehicular Sciences LLC, IPR2013-00419, Paper 32, at 5 (P.T.A.B. Mar. 7, 2014) (Toyota). And if the claim adds a means-plus-function limitation, the patent owner "should" identify the corresponding structure, material, or acts. The Board counsels that indicating a term should be given its plain and ordinary meaning is unhelpful, and the motion should provide a construction supported by evidence.

Written Description

Similarly, patent owners must show written description support for the claim as a whole under 35 U.S.C. § 112, first paragraph. 37 C.F.R. § 42.121(b)(1)–(2). This includes the entire combination, as well as any new features. Toyota, IPR2013-00419 at 5. For example, in Garmin Int'l, Inc. v. Cuozzo Speed Techs, LLC, the patent owner, Cuozzo, failed to explain where the specification supported the proposed combination of three elements, given the proposed claim construction. Thus, even when combining elements are found in other claims, the patent owner must show written description support.

Contrast that decision with Idle Free Systems, Inc. v. Bergstrom, Inc., IPR2012-00027, Paper 66 (P.T.A.B. Jan. 7, 2014) (Idle Free), where Bergstrom relied on the specification to support a proposed amendment, which the Board found "sufficient, if unrebutted, to show written description support for the proposed substitute claims." Idle Free tried to discount that reliance by relying on new expert testimony, but the Board found that testimony unpersuasive. Idle Free at 29–31. Similarly, in International Flavors, the patent owner pointed to specific parts of the written description by paragraph number—supporting both the original claim and the added limitations. Int'l Flavors, IPR2013-00124 at 10. Pointing to clear support in the specification, therefore, may meet the Board's requirements.

Patentability over All Art Generally Known to Patent Owner

Parties have successfully argued that claim amendments are patentable over prior art references applied to the original patent claims. See, e.g., Int'l Flavors, IPR2013-00124 at 12; Idle Free, IPR2012-00027 at 31–32. But, as noted in a March 2014 opinion authored by Board Judge Jameson Lee, "[e]xplaining patentability over references applied by the petitioner against the original patent claims is not the main event." Toyota, IPR2013-00419 at 4; see also Idle Free, IPR2012-00027 at 33 ("Distinguishing the proposed substitute claims only from the prior art references applied to the original patent claims, however, is insufficient to demonstrate general patentability over prior art.").

Rather, the patent owner should discuss "whether the feature was previously known anywhere, in whatever setting, and whether or not the feature was known in combination with any of the other elements in the claim." Toyota, IPR2013-00419 at 4; see also 37 C.F.R. § 42.20(c). Accordingly, "there should be a discussion of the ordinary skill in the art" in every motion to amend, and it should be specific to the "technical knowledge pertaining to the feature added," rather than "this many years of education and that many years of experience." In International Flavors, the patent owner went beyond distinguishing the closest prior art to "demonstrate the level of ordinary skill in the art, as well as provid[e] evidence regarding what would have been understood by the ordinary artisan as to those features being relied upon to demonstrate patentability of the proposed claims." Int'l Flavors, IPR2013-00124 at 12. In particular, they relied on references as evidence that "small changes in structure can result in a compound with very different properties," which the Board found persuasive. Int'l Flavors, IPR2013-00124 at 15–16.

Thus, the patent owner may wish to introduce evidence, which can include textbooks, examples of conventional practices, and even prior art searches. Why prior art searches? As the Board noted in Emcore:

An inter partes review is neither a patent examination proceeding nor a patent reexamination proceeding. The proposed substitute claims, in a motion to amend, are not entered automatically and then subjected to examination. Rather, the proposed substitute claims will be added directly to the patent, without examination, if the patent owner's motion to amend claims is granted.

Emcore, IPR2012-00005 at 55. As one Board judge suggested at a PTAB roundtable event, a certified prior art search report and an expert declarant who can testify—separately from the patent owner's response—to the contents of that search report can go a long way toward demonstrating the patentability of the substitute claims. See PTAB AIA Trial Roundtable, Part I, at 1:30:15 (Apr. 15, 2013) ("If [the patent owners seeking amendment] want to do a prior art search, that's their option, but, I don't think I want to set down a bright-line rule that they have to, but . . . we want a good-faith effort by the patent owner to tell us what you know, especially about that added feature.") (Comments of Lead Judge Grace Obermann). In sum, the patent owner should take appropriate steps to demonstrate the patentability of the proposed claims, recognizing that they will proceed directly to issue if the Board allows amendment.

Compliance with Technical Requirements of Board Rules

In addition to the substantive showings discussed above, the rules on practice before the Board hold traps for the unwary. Errors such as improper claim numbering, unintentional broadening of claim scope, and running afoul of the Board's strict page limits may scuttle a motion to amend. Patent owners are well served by keeping these technical requirements in mind in preparing motions to amend.

Equal number of claims canceled; improper numbering. First, Board rules require that there be no "amending in place." See Toyota, IPR2013-00419 at 2. During its April 2014 roundtable, the Board gave an example of allowing a hypothetical patent owner to replace claim 1 with a substitute claim 6, and replace claim 4 with substitute claim 7. See AIA Trial Roundtables, PowerPoint Slides, at 68 (Apr. 15, 2014). Note, "[t]he request to cancel claims will not be regarded as contingent. However, the request to substitute claims is always contingent." Toyota, IPR2013-00419 at 2. In other words, a patent owner may not simply add limitations to an existing claim; the existing claim must be cancelled and a new claim (including the proposed amendment) added.

No broadening claims. By statute and regulation, proposed substitute claims cannot enlarge the scope of the claims under review. 35 U.S.C. § 316(d)(3); 37 C.F.R. § 42.121(a)(2)(ii). Thus, a "patent owner may not seek to broaden a challenged claim in any respect." Emcore, IPR2012-00005 at 53. Removing "any feature of the challenged claim being replaced" runs afoul of this prohibition and will be considered "not responsive to a ground of unpatentability of [the] challenged claim." Emcore, IPR2012-00005 at 53. Accordingly, the patent owner may succeed if the substitute claims only add features to the claims, without removing any original claim language. See, e.g., Int'l Flavors, IPR2013-00124 at 9 (proposing as a new limitation a subset of a Markush group, thus clearly limiting the scope of the original claim); Idle Free, IPR2012-00027 at 27–28. By proceeding in this way, the patent owner can ensure "no issue" regarding the prohibition against broadening original patent claims. Idle Free, IPR2012-00027 at 28.

Avoid double patenting. Further, the Board may deny as raising double patenting issues an amendment that simply includes the language of an existing dependent claim. See PTAB AIA Trial Roundtable, Part I, at 1:34:40 (Apr. 15, 2013) ("Wouldn't that mean that you're double patenting? Because the scope of your substitute would be identical to the scope of your dependent claim.") (Comments of Lead Judge Grace Obermann). To avoid the prohibition on double patenting, a patent owner should consider adding either wholly new limitations or new combinations of features found in other claims, provided that the new subject matter finds written description support in the specification. For instance, in International Flavors, the motion to amend added only the first five compounds listed in a challenged dependent claim—thus avoiding identical scope, but also providing written description support for the limitation. Int'l Flavors, IPR2013-00124 at 9.

Page limits. Patent owners are also well served by keeping in mind the strict page limits applicable to Board Proceedings. Parties have only 15 pages for all motions, including motions to amend. 37 C.F.R. § 42.24(a)(1)(v). While this limit excludes tables of contents, tables of authorities, certificates of service, and appendices of exhibits, multiple judges have suggested that patent owners focus on proving up one or two substitute claims, rather than attempting to "save" every claim at issue.


Although nearly all motions to amend have failed to date, the denials—and the single grant-in-part thus far—provide valuable lessons for any patentee considering a motion to amend. Moreover, many parties have successfully met some of the Board's various requirements for amending claims, each denial painting the picture of what a successful post-grant "motion to amend" will look like. By applying the lessons of the past, a patent owner can hope for better outcomes in future motions to amend.

Keywords: litigation, intellectual property, PTAB, inter partes review, amendments, patents, prior art

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