PTAB Limits Claim Amendment in Inter Partes Review


By: Azy Kokabi

The Board’s requirements for amending a claim in inter partes review impose significant limitations for a Patent Owner as compared to conventional patent prosecution, reissue proceedings, or ex parte reexamination. The Board’s recent decisions have discussed many of the requirements set forth in 37 C.F.R. 42.121, making clear that there are substantial limitations on the Patent Owner’s ability to amend its claims during inter partes review.

Conferring with the Board to file a Motion to Amend

Section 42.121 requires that a Patent Owner “file one motion to amend, but only after conferring with the Board.” The requirement to confer with the Board was discussed in both Nichia v. Emcore (IPR2012-00005, Paper No. 27) and Idle Free Systems, Inc. v. Bergstrom (IPR2012-00027). In Nichia, the Board determined that the Patent Owner, Emcore, did comply with the requirement to confer even though it had not initiated a separate telephone conference identifying a fully developed claim set. Rather, Emcore listed the motion to amend in its list of proposed motions and discussed the motion during the initial conference call with the Board. IPR 2012-00005, Paper No. 27 at pg. 2. In contrast, in Idle Free, the Board dismissed the motion to amend because the Patent Owner, Bergstrom, had failed to confer with the Board about special amendments contemplated in the motion. Although Bergstrom had discussed the motion to amend in its initial conference call, “nothing specific was discussed about how Bergstrom intended to amend its claims.” Id.

It remains unclear from the record how Nichia’s acts constituted conferring with the Board while Bergstrom’s action failed to comply with the rule. Nichia generally discussed its motion to amend claims with the Board in the initial conference call. See Paper No. 17. Likewise, Bergstrom discussed its intend to file a motion to amend during an initial conference call with the Board (Paper No. 15). Although a transcript of the calls is not available, it appears that providing significant details of the proposed amendment to the Board during the initial conference call may satisfy the conferring requirement of section 42.121. However, to ensure that the requirement of conferring is satisfied, the Patent Owner should initiate a telephone call with the Board and obtain guidance for filing its motion to amend, without relying simply on the initial conference call to satisfy this requirement under section 42.121(a).

Responding to Grounds of Unpatentability

Section 42.121 further states that a motion to amend may be denied where the “amendment does not respond to a ground of unpatentabilty involved in the trial.” The Board has clarified this requirement, explaining that the Patent Owner must identify the added or narrowing feature added to each claim and explain how the feature is patentably distinct over the cited art as well as prior art known by the Patent Owner. See Avaya Inc. v. Network-1 Security Solutions, Inc., (IPR2013-00071), Innolux Corporation v. Semiconductor Energy Labs. Co., Ltd. (IPR2013-00066 & IPR2013-00068), and Idle Free Systems, Inc. v. Bergstrom (IPR2012-00027).

In Avaya, the Board stated that it would be essential for the Patent Owner “to establish the significance of the added feature from the perspective of the level of ordinary skill in the art.” Id. In other words, the emphasis in the motion to amend should be on the added feature. Indeed, the Board explained that a Patent Owner may not incorporate argument from its Patent Owner response into the motion to amend because in the context of a motion to amend, the Patent Owner’s focus should be on the feature or features added to each substitute claim, whereas the Patent Owner response focuses on the original patent claims, which would not include the new feature. Innolux Corporation v. Semiconductor Energy Labs. Co., Ltd. (IPR2013-00066 & IPR2013-00068), Paper No. 24 at page 2.

In Idle Free, the Board additionally stated that a declaration from a technical expert should explain the significance and usefulness of the feature(s) added by the proposed substitute claims from the perspective of one of ordinary skill in the art and also on “the level of ordinary skill, in terms or ordinary creativity and basic skill set.“ Paper No. 26 at pp. 7-8. A blanket statement from the Patent Owner stating that the prior art fails to teach or suggest the multiple claim elements including the newly added feature is not enough. Id. Rather, as discussed in both Avaya and Idle Free, the declaration should explain why the added feature is known in any context and why in the context of the claimed invention, it is so remote or different that one of ordinary skill in the art would not have applied that teaching to arrive at the claimed invention. Avaya at. Pg. 3 and Idle Free at pg. 7.

Furthermore, the Board explained that the Patent Owner must show why the new claims are patentable not just over the prior art of record, but also of prior art known to the Patent Owner, which may not have been cited in the proceeding. Avaya, Paper No. 38, pg. 2, see also, Idle Free (Paper No. 26 at pg. 7) and Oracle Corp v. Clouding IP, LLC (IPR2013-00099), Paper No. 19, p. 2. It is the burden of the Patent Owner to show patentable distinction of the substitute claims over the cited art and other known art. Idle Free, Paper No. 26 at pg. 7. This requirement places a considerable burden on a Patent Owner to explain how the narrowing feature overcomes all prior art known, including references that may have already been cited during patent prosecution. All of these showings, including an explanation of the construction of the newly added features, must be explained within the page limit imposed by the Board, typically 15 pages.

The Board’s rationale for the stringent requirement of responding to claims of unpatentablity likely stems from the cost of review of such motions in both time and expense. In Idle Free, the Board appreciated that the “just” resolution of IPR proceedings supports allowing a patent owner to propose one substitute claim for each challenged claim, but also stated that every substitute claim adds to the cost of review, which the Board seeks to streamline through these requirements. Idle Free (Paper No. 26 at pg. 7).

The Content of the Motion to Amend Is Strictly Defined

Section 42.121(b) sets forth the content of the motion to amend. Section 42.121(b)(1) states that the motion to amend must include “support in the original disclosure of the patent for each claim that is added or amended.” In Nichia, the Board explained that the Patent Owner must show written description support in the original disclosure of the application, rather than the issued patent. Nichia, IPR2012-00005, Paper No. 27 at p. 4 and Oracle Corp v. Clouding IP, LLC (IPR2013-00099), Paper No. 19, p. 2. Further, merely indicating “where each claim limitation individually is described in the original disclosure may be insufficient to demonstrate support for the claimed subject matter as a whole.” Nichia, Paper No. 27 at p. 4. The Board’s Order in Nichia indicates that unless an amended claim is described in haec verba, an explanation is required to explain why one of ordinary skill in the art would have recognized that the inventor possessed the claimed subject matter. Id., see also Oracle Corp., Paper No. 19 at p. 2.

The content of a motion to amend must also include a claim listing. See 42.121(b). The claim listing must be part of the motion to amend, and not filed as a separate paper, an appendix or an attachment to the motion. See Synopsys, Inc. v. Mentor Graphics Corp. (IPR2012-00042, Paper No. 30). The claim listing may not be in a single spaced claim chart or otherwise deviate from the format of the motion to amend because, as the Board explained in Innolux, it would require the Office to assemble the new claims in a proper format longer after the case has been decided which adds to cost and delay. IPR2013-00066, Paper No. 24, pp. 3-4. The strict requirements for claim listing may be problematic for Patent Owners with long claims—a listing of which may comprise a majority of the fifteen page limit of the motion. The Board is unsympathetic to granting more pages to a Patent Owner, suggesting an alternative solution to the Patent Owner such as submitting fewer amended claims or pursuing further amended claims via ex parte reexamination or reissue. Id. at p. 5

The requirements for the Patent Owner in filing a motion to amend are detailed and stringent. The Patent Owner should take care to follow the rules clarified in the Board’s recent decisions, and to provide technical and expert declarations supporting each proposed amendment, or risk the motion being dismissed or denied.