A Patent Owner Bears a Heavy Burden in Amending Claims in an IPR Proceeding

By Reza Mollaaghababa

A patent owner in an inter-partes review (IPR) proceeding may amend a challenged patent if they satisfy a number of statutory requirements set forth by the AIA (America Invents Act) and the regulations promulgated by the USPTO.  In particular, the AIA states that “… the patent owner may file 1 motion to amend the patent in 1 or more of the following ways: (A) Cancel any challenged patent claim. (B) For each challenged claim, propose a reasonable number of substitute claims.” 35 U.S.C. 316(d).  The USPTO rules (42.121) state:

(a)  Motion to amend. A patent owner may file one motion to amend a patent, but after conferring with the Board.
(1)  Due date.  Unless a due date is provided in a Board order, a motion to amend must be filed no later than the filing of a patent owner response.
(2)  Scope.  A motion to amend may be denied where:
(i)    The amendment does not respond to a ground of unpatentability involved in the trial; or
(ii)   The amendment seeks to enlarge the scope of the claims of the patent or introduce new subject matter.
(3) A reasonable number of substitute claims.  A motion to amend may cancel a challenged claim or propose a reasonable number of substitute claims.  The presumption is that only one substitute claim would be needed to replace each challenged claims, and it may be rebutted by a demonstration of need.

In Idle Free Systems, Inc. v. Bergstrom, Inc. IPR (IPR 2012-00027), the Board shed light on some of the requirements for amending claims in an IPR proceeding.  The Board emphasized that an inter partes review is “neither a patent examination nor a patent reexamination.”  As such, the proposed claims “are not added to the patent unless a corresponding motion to amend claims has been granted by the Board.”  In particular, the patent owner has the burden (1) “in all circumstances, to make a showing of patentable distinction over the prior art; (2) “in certain circumstances, to a make a showing of patentable distinctions over all other proposed substitute claims for the same challenged claim; and (3) in certain circumstances, to make a showing of patentable distinction over a substitute claim for another challenged claim.”   The Board indicated that the patent owner can rely on declaration testimony of a technical expert for a showing of patentable distinction of proposed claims over prior art, but a “mere conclusory statement by counsel, in the motion to amend, to the effect that one or more added features are not described in any prior art, and would not have been suggested or rendered obvious by prior art, is on its face inadequate.”

The Board dismissed Bergstrom’s Motion to Amend for “failure to confer with the Board prior to filing the motion.”  The Board, however, indicated that as this was one of the first inter partes reviews to be instituted, “… it was not unreasonable for Bergstrom to have considered the initial conference call as satisfying the conferring requirement, even though nothing specific was discussed about how Bergstrom intended to amend claims.”  The Board hence allowed Bergstrom to file a renewed motion to amend.

Accordingly, the patent owner has essentially one chance to amend any of the challenged claims.  Moreover, the requirement that there be a one-to-one correspondence between the challenged and the substitute claims limits the patent owner’s ability to hedge its bets by presenting multiple claims of different scopes.  These requirements place a great burden on the patent owner to devise a comprehensive strategy for defending the patent against the raised challenge at the outset of the proceeding and limit the patent owner’s ability to adjust its defense strategy in response to the way that proceeding unfolds.

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