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").

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