Patent Owner’s Difficult Burden for Amendments in PTAB Proceedings

January 23, 2015

In proceedings before the Patent Trials and Appeals Board (PTAB or Board), Patent Owners are allowed to propose substitute claims in the event that one or more claims is cancelled.  35 U.S.C. §§ 316(d)(1), 326(d)(1).  As discussed in previous blog articles, the proposed claims are not entered automatically or subjected to examination. Respironics, Inc., v. Zoll Medical Corporation, p. 20 (IPR2013-00322, Paper No. 46, September 17, 2014). Rather, a Patent Owner has the burdens of proof to show that the proposed claims are both adequately supported by the specification and patentably distinct from prior art.

In order for the Patent Owner to meet its burden showing support in the written description, a Patent Owner needs to demonstrate that each element of the limitation of the proposed claims was adequately supported, and that the claimed subject matter is supported as an integrated whole. Id. at p. 20. In order to meet is burden of patentability, a Patent Owner must show that the substitute claims are patentable over both the applied prior art and prior art in general.  These burdens have proven substantial as, to date, very few motions to amend have been granted.  Two recent final decisions in Riverbed Technology, Inc. v. Silver Peak Systems, Inc. (IPR2013-00402 at Paper No. 35 & IPR2013-00403 at Paper No. 33, December 30, 2014) are notable exceptions. These decisions will be discussed in a future blog article.

Two examples where the Petitioner failed to convince the PTAB that substitute claims are patentable are discussed below.

Respironics, Inc. v. Zoll Medical Corp.

In Respironics, Inc. v. Zoll Medical Corp., the proposed substitute claim contained extensive amendments to the independent claim, more than tripling its length. Respironics, pp. 21-22, and 24. In support of these amendments, the Patent Owner initially provided only a string of cites, later providing a claim chart in a Supplemental Declaration in support of the Reply brief. Id. at pp. 23-24.

The PTAB first found that a string of citations fails to meet the burden of showing sufficient written description support.  Rather, a string of citations is merely an invitation for the Board to search the cited portions and construct a cogent argument.  Secondly, the Board found that the Reply evidence was an impermissible attempt to bolster the Patent Owner’s position, rather than merely respond to arguments raised by the Petitioner.  Accordingly, the supplementary evidence should not be considered. 37 C.F.R § 42.23(b); 77 Fed. Reg. at 48,767.

Further, the Board determined that, even if the supplementary claim chart were to be considered, it would be insufficient to meet the burden of proof.  In order to meet this burden, the Patent Owner needed to explain how each cited passage provides adequate support for the claim elements and how the passages provide support for the claim as a whole.  However, a claim chart merely purports to show disclosure of each element.  Accordingly, the Patent Owner failed to meet its burden., Inc. v. Virtualagility, Inc.

In, Inc. v. Virtualagility, Inc., (CBM2013–00024, Paper No. 47, September 16, 2014), the Board again denied a motion to amend.  Unlike in Respironics, however, the Patent Owner in showed adequate support in the patent disclosure for the substitute claims.  However, the Patent Owner did not meet its burden to show that the substitute claims were patentable over both the applied prior art and prior art in general.

In support of its proposed amendments, the Patent Owner stated that “[n]one of the prior art references known to the Patent Owner, either alone or in combination, teaches or suggests” the new features, and further provided a discussion of how the substitute claims are distinguishable over the prior art at issue in the proceeding before the Board., p. 41.  However, the Patent Owner did not address either the level of ordinary skill in the art or all the prior art known to the Patent Owner.  Of particular note, the Patent Owner failed to address how the substitute claims are distinguishable over the relevant art already of record, i.e. the art raised during the prosecution. Id. at p. 43.  Accordingly, the Patent Owner did not meet its burden of showing patentability.


The Board has placed a substantial burden on the Patent Owner before granting a motion to amend.  The Patent Owner must 1) prove adequate support in the specification for the substitute claims, both individual elements and as a whole, and 2) prove that the substitute claims are distinguishable over the cited art in the proceeding, the ordinary skill in the art, and all relevant art of record.  All of this must be addressed in a mere 15 pages. 37 C.F.R. § 42.24(a)(1)(v).  While a motion to amend may be a viable route, patent owners and practitioners need to be aware of burdens they must bear and the uphill battle they face.


Brennan Carmody


As an associate in the firm’s Electrical/Mechanical Group, Mr. Carmody ‎prepares and prosecutes patents in a wide range of technologies. He has ‎experience in a range of fields including computer systems, software, embedded ‎architecture, networking, and signal processing.‎