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    PTAB RELIES ON THE PATENT OWNER’S FAILURE TO ESTABLISH GENERAL PATENTABILITY IN DENYING MOTION TO AMEND

    1/22/2014

    By David Emery

    In Idle Free, the Board relied on the stringent requirements for establishing “general patentability” and denied Bergstrom’s renewed motion to amend the claims.  The Board’s decision exemplifies the strict nature of these proceedings by denying Bergstrom’s motion to amend despite agreeing that the proposed claims distinguish over the art of record. 

    In its first crack at the apple, the Board denied Bergstrom’s first motion to amend because the motion was filed “without having conferred with the Board about the specific amendments contemplated, in violation of 37 C.F.R. § 42.121(a).”  Idle Free Systems, Inc. v. Bergstrom (IPR2012-00027, Paper No. 26, page 2).  In addition to permitting Bergstrom a chance to file a renewed motion to amend, the Board’s decision described “several important requirements for a patent owner’s motion to amend claims.” Id.

    One such requirement was a need to show a patentable distinction. Id. at 6.  The Board’s guidance explained that this burden is not met by merely distinguishing over the art of record, but should include some representation of the “closest prior art known to the patent owner”, which must be more than a “conclusory remark that no prior art to the patent owner renders obvious the proposed substitute claims.”  Id. at 7.  Additionally, in distinguishing over this “closest prior art”, the Board noted the patent owner may rely on expert declarations regarding the significance and usefulness of the added features from the perspective of one of skill in the art. Id

    In the renewed motion to amend, Bergstrom included a section titled “Allowability of Proposed Substitute Claims,” in which it addressed the art of record. (Paper No. 29).  Additionally, Bergstrom identified the closest prior art (which was of record) and stated that no “other art known to the Patent Owner discloses, teaches or suggests” the proposed new claim features. Id.  Lastly, using an expert declaration, evidence suggesting the usefulness and advantages of the claimed features was discussed.

    In the Final Written Decision, the Board denied Bergstrom’s motion to amend the claim because they did not adequately demonstrate the general patentability of the proposed new claims.  (Paper No. 66, p. 33).  While conceding that Bergstrom identified the closest prior art, this was determined to be insufficient absent a discussion of “the level of ordinary skill in the art, and what was previously known, with respect to each added feature, including the ordinary skill set possessed by such a hypothetical person.” Id. at 34.  

    For example, one of the proposed added features related to (1) simultaneously receiving electrical power from the battery and shore power; and (2) automatically prioritizing the use of shore power over battery power.  One deficiency was that Bergstrom failed to represent that it was the first to have a system receiving both shore power and battery power or that it was the first to prioritize this power.  Id. at 35.  On the other hand, if Bergstrom was not the first to have these features, it should have revealed what would have been known to one of skill in the art.  Id.  In this context, the Board stated “it is essential to know whether such method of operation pre-existed, in other contexts, and, if so, how they worked.”

    When read in the context of the Board’s first decision denying Bergstrom’s first motion to amend, the Final Written Decision appears to better explain what is required by a patent owner intending to pursue claim amendments.  That is, Bergstrom identified the closest prior art, stated that no other art known to the patent owner disclosed the newly proposed features, explained the usefulness of the newly proposed feature, and distinguished over the closest prior art.  Nowhere did the Board’s first decision describe that it was essential to know whether such a method of operation pre-existed in other contexts.  Unfortunately for Bergstrom, the Board’s guidance in Avaya Inc. v. Network-1 Security Solutions, Inc. (IPR2013-00071, Paper No. 38) may have provided an impetus to describe whether the feature was known in other contexts.  However, this decision was entered July 22, 2013, about one month after Bergstrom’s motion to amend.  Consequently, despite not being precisely apprised of what was required in their renewed motion to amend, Bergstrom’s motion to amend was denied.

    As exemplified by this decision, the requirements for filing a successful motion to amend are not only strict and exacting, they are constantly evolving.  The patent owner must heed the rules and study their evolution as more decisions come down.