The PTAB’s Denial of Patent Owner’s Motion to Amend Underscores the Obstacles that Patent Owners Face In Amending Challenged Claims

By Reza Mollaaghababa

As we had reported earlier, a patent owner has a heavy burden in amending claims in an inter partes review (IPR) proceeding.  The recent case of Nichia Corp. v. Emcore Corp. (IPR2012-00005) provides an example of obstacles that a patent owner may face when attempting to amend the challenged claims.  In this case, the patent owner (Emcore) filed a motion with the PTAB to request leave to cancel certain challenged claims and replace them with new claims.  The PTAB denied Emcore’s motion to amend.

The PTAB emphasized that an “inter partes review is more adjudicatory than examinational in nature.”  As such, Emcore’s substitute claims would be entered “only upon Emcore having demonstrated the patentability of those substitute claims.”  The PTAB reviewed the requirements that the AIA imposes on a patent owner in amending the challenged claims.  In particular, Section 316(d)(1) of the AIA states that a patent owner may propose, for each challenged claim, a reasonable number of substitute claims.  The presumption is that “only one substitute claim would be needed to replace each challenged claim,” although “the presumption may be rebutted by a demonstration of need.” 37 C.F.R. §42.121(a)(3).

The PTAB further emphasized that “[e]ach proposed claim should be traceable to an original challenged claim as a proposed substitute claim for that claim.”  The PTAB stated that Emcore had failed to demonstrate “which proposed new claim is replacing which specific challenged claim.”  Rather, Emcore had identified the challenged claims, as a group, and had requested that they be replaced with the proposed new claims.  The PTAB thus concluded that it did not have sufficient information to determine whether Emcore had proposed a reasonable number of substitute claims for each original claim.

Emcore had also failed to identify all the changes in the proposed new claims relative to the original claims.  The PTAB emphasized that “[T]he burden should not be placed on the Board to sort through the Emcore’s patent claims and proposed claims to determine which limitations are added and which limitations are eliminated.”

Emcore had further failed to provide its proposed claim construction for a number of new terms introduced in the substitute claims.  The PTAB noted in this regard that “[W]ithout a proper construction of the new claim terms, Emcore’s motion does not provide adequate information for the Board to determine whether Emcore has demonstrated the patentability of its proposed substitute claims, and thus, Emcore fails to meet its burden of proof under 37 C.F.R. §42.20(c).”

The PTAB further asserted that “a motion to amend may be denied where the amendment does not respond to a ground of unpatentability involved in the trial.”  The proposed new claims put forth by Emcore did not include certain features of the original claims.  The PTAB objected that Emcore did not “explain adequately why the removal of all those limitations is responsive to a ground of unpatentability.”

This case illustrates once more that an inter partes review is quite different from a patent examination process in which a patent owner has great leeway in amending claims in view of prior art.  In an inter partes review, the patent owner is not entitled as a matter of right to amend the challenged claims, but must convince the Board that any proposed amendments comply with the applicable statutory and regulatory requirements.

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