By Reza Mollaaghababa and Anthony Pisano
In an Inter Partes review (IPR) proceeding before the PTAB, a patent owner is not automatically afforded the right to amend the challenged claims. Rather, the patent owner has a burden of establishing that it is entitled to amend one or more of the challenged claims. 37 C.F.R. §42.20(c). To this end, the patent owner must first confer with the Board regarding a proposed motion to amend. After the patent owner receives the Board’s approval, it must file a motion to amend contemporaneous with or prior to the patent owner’s response. 37 C.F.R. §42.121(a)(1). The proposed amendments must be in response to a ground of unpatentability involved in the trial, and may not enlarge the scope of the original challenged claims. §37 C.F.R. 42.121(a)(2)(ii) and 35 U.S.C. §316(d).
In addition, the Board has held that the patent owner bears the burden of proof to demonstrate the patentability of the proposed claims, not only with respect to the prior art references on which the trial was instituted, but also over the prior art in general. Idle Free Sys., Inc. v. Bergstrom, Inc. (IPR2012-00027). The PTAB has explained that the requirement to distinguish the proposed claims over prior art in general does not mean that the patent owner is “assumed to be aware of every item of prior art presumed to be known to a hypothetical person of ordinary skill in the art.” Id. Rather, the patent owner should discuss, and present evidence (if appropriate), regarding the level of ordinary skill the art and what was known in the relevant timeframe about the features being relied on to demonstrate patentability of the proposed claims.
The requirement to show the patentability of the proposed amended claims over prior art in general has been an important factor in the Board’s repeated denial of motions to amend. In fact, the Board had not granted any motion to amend until last month when the Board granted the patent owner’s motion to amend with respect to certain challenged claims in International Flavors & Fragrances Inc. v. The United States of America (IPR2013-00124).