During a trial, a patent owner may file a conditional motion to amend one or more claims of the patent. The motion to amend is only considered if the Board determines that the challenged claims are unpatentable. 35 U.S.C. § 316(d) (IPR proceedings) and 35 U.S.C. 326(d) (CBM and PGR proceedings). Below are PTAB cases and Federal Circuit appeals addressing motions to amend.
Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292 (Fed. Cir. 2015). The court reversed the Board’s construction of a term, determining that it was unreasonably broad because it did not reflect the language of the disclosure. The court affirmed the Board’s requirement for motions to amend that patent owner must demonstrate that the amended claims are patentable over all the prior art of record, not just prior art that the Board relied upon when instituting review. The Federal Circuit approved the Board’s interpretation of its regulations as set forth in Idle Free Sys., Inc. v. Bergstrom, Inc., IPR2012-00027, Paper 26 (PTAB June 11, 2013) (informative), in which the Board specified that patent owner must demonstrate “a patentable distinction over the prior art of record and also prior art known to the patent owner.”
Prolitec, Inc. v. ScentAir Techs., Inc., 807 F.3d 1353 (Fed. Cir. 2015). The Board may require a patent owner to, in a motion to amend, distinguish the proposed substitute claims over the prior art from the original prosecution, in addition to the prior art of record in the IPR proceeding.
Nike, Inc. v. Adidas AG, 812 F.3d 1326 (Fed. Cir. 2016). In AIA post-grant proceedings, patent owner bears the burden of proof to demonstrate that the proposed substitute claims are patentable over the prior art of record in the IPR proceeding as well as prior art known to patent owner. With regard to prior art not of record, patent owner can satisfy its burden of proof as well as its duty of candor and good faith by providing arguments why the proposed claims are patentable over prior art known to patent owner.
Veritas Techs. LLC v. Veeam Software Corp., Appeal No. 2015-1894 (Fed. Cir. Aug. 30, 2016). While affirming the Board’s determination that the challenged claims are obvious, the Federal Circuit vacated the Board’s denial of patent owner’s motion to amend, holding that the denial was “unreasonable” and “arbitrary and capricious.” The Federal Circuit reviews the Board’s decisions on motions to amend under the Administrative Procedure Act. The court faulted the Board for denying the motion based on its insistence that patent owner discuss whether each newly added feature was separately known in the prior art. The Board denied the motion because patent owner discussed the proposed new features in combination with other known features. The Federal Circuit indicated that it could “not see how the Board could reasonably demand more from Veritas in this case.” The court indicated that patent owner’s discussion of the proposed new features in combination with other known features was not “meaningfully different from describing what is new about the proposed claims, even in comparison to the unamended claims.” The court noted well-settled precedent that “novel and nonobvious inventions often are only a combination of known individual features.”
Nichia Corp. v. Emcore Corp., IPR2012-00005, Paper 27 (June 3, 2013) (representative). A motion to amend claims must clearly identify the written description support for the proposed substitute claims. Patent owner is required to set forth, for each proposed substitute claim, written description support in the original disclosure of the application that issued as the patent for each proposed substitute claim, unless patent owner, in its motion, indicates that there was no change to the original disclosure when the patent issued. Citations to a prior application are relevant only for the benefit of an earlier-filed disclosure, and not for the written description support for the proposed substitute claims. Merely indicating whether each claim limitation is individually described in the original disclosure may be insufficient to demonstrate support for the claimed subject matter as a whole. If the claim language does not appear in the same words in the original disclosure, a mere citation to the original disclosure, without any explanation as to why a person of ordinary skill in the art would have recognized that the inventor possessed the claimed subject matter as a whole, may be inadequate.
Idle Free Systems, Inc. v. Bergstrom, Inc., IPR2012-00027, Paper 26 (PTAB June 11, 2013) (informative). A patent owner seeking to amend its claims must first confer with the Board about the specific amendments contemplated, and may only present a reasonable number of substitute claims (presumptively, one substitute claim for each challenged claim). In its motion to amend, patent owner must distinguish the amended claims over (1) the prior art of record and (2) prior art known to the patent owner. This includes addressing the basic knowledge and skill set possessed by a person of ordinary skill in the art without reliance on any particular item of prior art. Patent owner must also show that there is no broadening of scope of the claims, and that the proposed claims are supported adequately by the written description of the original application as filed.
CBS Interactive Inc. v. Helferich Patent Licensing, LLC, IPR2013-00033, Paper 122 (Mar. 3, 2014). The Board denied patent owner’s motion to amend for failing to demonstrate the patentability of the proposed claims. The Board determined patent owner did not identify how new claim terms should be construed under 35 U.S.C. § 112, ¶ 6, which does not provide the Board with sufficient information to determine whether the proposed claims are patentable. Patent owner did not demonstrate written description support with respect to the original application that issued as the challenged patent. The specification of the patent is not the original disclosure, and patent owner did not demonstrate support in the earlier applications from which priority is sought. The Board also determined that patent owner did not meet its burden in demonstrating patentability of the claims. Patent owner’s analysis is limited to whether individual references disclose the new feature, not whether the proposed claims would have been nonobvious over the prior art. Anticipation and obviousness are separate conditions of patentability, requiring different tests and different elements of proof.
Xilinx, Inc. v. Intellectual Ventures I LLC, IPR2013-00029, Paper 49 (PTAB Mar. 10, 2014). The Board denied patent owner’s motion to amend because patent owner did not provide a claim construction for new limitations in the proposed claims and did not account sufficiently for the basic knowledge and skill set possessed by a person of ordinary skill in the art in its arguments for why the proposed claims are patentable. Patent owner asserted that new limitations in the proposed claims should be given their plain and ordinary meaning without providing an explicit construction. The Board indicated that such a general construction was insufficient to demonstrate patentability. Concerning patentability over the prior art, the Board indicated that the proposed claims included several standard components known in the art, but did not provide a discussion about why one skilled in the art would not have known about those components and why it would not have been obvious to combine those components with the features of the original patent claims.
Bloomberg Inc. et al. v. Markets-Alert Pty Ltd., CBM2013-00005, Paper 71 (PTAB Mar. 26, 2014). Patent owner filed a motion to amend which requested cancellation of the original claims and addition of new claims. Since the request to cancel claims was not based on the contingency of whether the proposed new claims would be added, the Board interpreted patent owner’s request as unequivocally requesting cancellation of the original claims. The Board determined that the motion to amend was deficient for several reasons. First, the Board faulted patent owner for only identifying support in the specification for the new features of the claims, rather than the entirety of the new claims. Second, the Board faulted patent owner for not providing a construction for certain terms, instead providing a construction of what the terms did not mean. Without such an explanation, the Board could not determine whether there was written description support for the claim language. Third, patent owner did not explain how the removal of a limitation in the original claims would convey to one skilled in the art that the inventor had possession of the broader concept in the new claims. Fourth, the Board determined that the proposed claims did not address the grounds of invalidity alleged in the petition, particularly since the proposed claims were broader than the original claims. Fifth, patent owner did not identify, on a one-by-one basis, which claims were being substituted.
Int’l Flavors & Fragrances Inc. v. The United States of America, IPR2013-00124, Paper 12 (PTAB May 20, 2014) (informative). As the moving party, patent owner bears the burden of proof to establish that it is entitled to the relief requested. A motion to amend is not entered automatically, but only upon patent owner having demonstrated, by a preponderance of the evidence, the patentability of the proposed claims. Proposed substitute claims may not enlarge the scope of the original patent claims. The Board authorized-in-part patent owner’s motion to amend, finding that patent owner demonstrated (i) written description support for the proposed claims, (ii) the proposed claims did not enlarge the scope of the original patent claims, and (iii) all but one of the proposed claims are patentable over the prior art.
BAE Sys. Info. and Elec. Sys. Integration, Inc. v. Cheetah Omni, LLC, IPR2013-00175, Paper 45 (PTAB June 19, 2014). The Board determined that patent owner did not demonstrate written description support for the features of its proposed substitute claims. 37 C.F.R. § 42.212(b)(1) requires a motion to amend to set forth the support in the original disclosure of the patent for each claim that is added. For written description support for the proposed substitute claims, patent owner referred to portions of the challenged patent and only for the added limitations in its proposed substitute claims. Such reference does not satisfy the requirements of Rule 42.121(b)(1) because the specification of the patent is not the original disclosure. Moreover, patent owner cites alleged support in the specification for only the added limitations. Patent owner does not identify support in the original disclosure “for each claim” in its motion to amend, as a whole and including the proposed new limitations, as required by Rule 42.121(b)(1). Patent owner therefore has not shown that its proposed substitute claims, as a whole, have written description support in the original disclosure of the patent.
Ariosa Diagnostics v. Isis Innovation Ltd., IPR2012-00022, Paper 166 (PTAB Sept. 2, 2014). A petitioner cannot challenge the patentability of claims under 35 U.S.C. § 101 in an IPR proceeding. In a motion to amend, however, patent owner has the burden of demonstrating the patentability of the claims. Where a district court has determined that the claims are invalid under 35 U.S.C. § 101, the Board will consider whether patent owner has explained how the proposed amendments addressed the district court’s concerns regarding the validity of the claims and whether patent owner has shown that its proposed amended claim encompasses patent eligible subject matter. In such a circumstance, patent owner must demonstrate more than patentability of the proposed substitute claims over the prior art.
Corning Optical Communications RF, LLC v. PPC Broadband, Inc., IPR2014-00441, Paper 19 (PTAB Oct. 30, 2014) (representative). Order provides guidance on the specific requirements for filing a motion to amend. The Board authorized patent owner to file proposed substitute claims in an appendix to a motion to amend such that the proposed claims do not count toward the page limit for the motion. A request to cancel claims will not be regarded as contingent. However, a request to substitute claims is always contingent upon a finding that the original patent claims are determined to be unpatentable or cancelled by patent owner. A proposed substitute claim should be responsive to the ground of unpatentability applicable to the original patent claim for which it is a substitute. Patent owner must clearly show, for each proposed substitute claim, the changes to the original claim which it is intended to replace. Patent owner must also provide a proposed claim construction for any new term used in a proposed substitute claim if the meaning of the new term can be anticipated as subject to dispute.
Facebook, Inc. v. EveryMD LLC, IPR2014-00242, Paper 31 (PTAB May 12, 2015). In opposing a motion to amend, petitioner may rely on prior art not already of record in the IPR proceeding. The Board determined that patent owner’s proposed substitute claims were not patentable over new prior art cited by petitioner. Patent owner’s mere citation in a table to various portions of the original disclosure, without any explanation why a person of ordinary skill in the art would have recognized that the inventor possessed the claimed subject matter as a whole, is inadequate to satisfy the written description requirement.
Masterimage 3D, Inc. v. RealD Inc., IPR2015-00040, Paper 42 (PTAB July 15, 2015) (precedential). The Board clarified the meaning of (1) “the prior art of record” and (2) “prior art known to the patent owner” as used in Idle Free. The Board indicated that (1) “the prior art of record” includes a) any material art in the prosecution history of the patent, b) any material art of record in the current proceeding, including art asserted in grounds not instituted by the Board, and c) any material art of record in any other proceeding before the PTO involving the patent. In addition, the Board indicated that (2) “prior art known to the patent owner” includes “no more than the material prior art that Patent Owner makes of record in the current proceeding pursuant to its duty of candor and good faith to the Office under 37 C.F.R. § 42.11, in light of a Motion to Amend.” In a motion to amend, patent owner has the burden of demonstrating that proposed substitute claims are patentable over the prior art of record. Once patent owner has set forth a prima facie case of patentability of its proposed substitute claims over the prior art of record, the burden of production shifts to petitioner.
Geox S.p.A. v. Outdry Technologies Corp., IPR2014-01244, Paper 27 (PTAB Dec. 18, 2015). The Board denied patent owner’s motion to amend because patent owner did not identify written description support for the proposed substitute claims. Patent owner identified written description support with respect to the patent and a machine translation of the priority document. The Board faulted patent owner for not identifying written description support with respect to the original specification of the application that resulted in the patent. In addition, the Board determined that the portions of the specification cited by the patent owner did not provide written description support for the features of the proposed substitute claims.
Global Tel*Link Corp. v. Securus Techs., Inc., IPR2014-01278, Paper 34 (PTAB Jan. 21, 2016). The Board denied patent owner’s motion to amend that sought to correct a typographical error in the dependencies of several claims. Patent owner conceded that the requested amendments were not responsive to a ground of unpatentability involved in the trial. The Board therefore denied the motion to under 37 C.F.R. § 42.11, which requires, in part, that the amendment responds to a ground of unpatentability involved in the trial.
Toshiba Corp. v. Optical Devices, LLC, IPR2014-01441, Paper 36 (PTAB Mar. 8, 2016). The Board denied patent owner’s motion to amend because patent did not demonstrate that there is adequate written description support for the substitute claims in the challenged reissue application or the application from which it claims priority. The Board indicated that patent owner’s proposed claims were broader in scope than the disclosure of the priority application because the proposed claims recited a “change,” but the priority application only supported an “increase.” The Board reasoned that a “change” is broad enough to encompass both an “increase” and a “decrease,” but the priority application disclosed only an “increase.” To adequately support the claims, the written description must clearly allow persons of ordinary skill in the art to recognize that the inventor invented what is claimed.
Amazon.com, Inc. v. Personalized Media Communications, LLC, IPR2014-01534, Paper 55 (PTAB Mar. 22, 2016). The Board denied patent owner’s motion to amend because patent owner did not demonstrate that the claims recite patent eligible subject matter under 35 U.S.C. § 101. An inter partes review cannot be instituted using 35 U.S.C. § 101 as the basis for a challenge brought by a petitioner. In a motion to amend, however, patent owner has the burden of demonstrating the patentability of the claims. Where a district court has determined that the claims are invalid under 35 U.S.C. § 101, the Board will consider whether patent owner has explained how the proposed amendments addressed the district court’s concerns regarding the validity of the claims and whether patent owner has shown that its proposed amended claim encompasses patent eligible subject matter.
Product Miniature, Inc. v. PO Displays USA, LLC, IPR2015-00266, Paper 43 (PTAB Apr. 13, 2016). The Board denied patent owner’s motion to amend because patent owner did not sufficiently explain why the substitute claims are patentable over the prior art. While not required to prove that the claims are patentable over every item of prior art known to a person of ordinary skill, the patent owner is required to explain why the claims are patentable over the prior art of record. The Board noted that patent owner argued that the additional claim limitations are distinguishable over several references. This, however, fails to satisfy patent owner’s burden of showing a patentable distinction of each proposed substitute claim over the prior art of record. Patent owner did not explain adequately why the additional limitations would have been unobvious to one of ordinary skill in the art. Patent owner does not explain why the additional limitations are more “than the predictable use of prior art elements according to their established functions.”
Shinn Fu Co. of Am., Inc. v. The Tire Hanger Corp., IPR2015-00208, Paper 24 (PTAB Apr. 22, 2016). The Board granted patent owner’s motion to amend, determining that the proposed substitute claims are patentable over the prior art of record, are supported by the original description, and do not enlarge the scope of the challenged claims of the patent which were determined to be unpatentable.
Sony Corp. v. Memory Integrity, LLC, IPR2015-00158, Paper 35 (PTAB May 19, 2016). The Board denied patent owner’s motion to amend on the basis that the proposed substitute claims did not comply with the enablement requirement of 35 U.S.C. § 112 ¶ 1. The Board indicated that patent owner’s motion lacked reference to any detailed discussion in the challenged patent of the how the proposed new features would operate, let alone such full, clear, concise, and exact terms as to enable any person skilled in the art, to make and use the system. Although the knowledge of one skilled in the art is relevant, the novel aspect of an invention must be enabled in the patent. The Board also indicated that patent owner could not demonstrate that an asserted reference was not prior art against the proposed new claims, because failing to comply with the enablement requirement precluded an earlier effective filing date prior to the critical date of the asserted reference. Consequently, patent owner’s failure to demonstrate enablement of the proposed substitute claims results in a failure to demonstrate novelty and non-obviousness of the proposed substitute claims.
Google Inc. and Apple Inc. v. ContentGuard Holdings, Inc., CBM2015-00040, Paper 34 (PTAB June 21, 2016). The Board granted patent owner’s motion to amend after determining that the challenged claims are unpatentable. The Board determined that, in compliance with 37 C.F.R. § 42.221, the proposed amendments were responsive to a ground of unpatentability involved in the trial, the proposed amendments did not enlarge the scope of the claims, patent owner demonstrated written support in the earlier-filed disclosure for the proposed substitute claim as a whole, patent owner provided a construction of the new claim terms, patent owner addressed the basic knowledge and skill set possessed by a person of ordinary skill in the art, and patent owner demonstrated the patentability of the claims over prior art known to patent owner. The Board also granted patent owner’s request and provided an advisory opinion stating that the amended claims are substantially identical to the challenged claims within the meaning of 35 U.S.C. § 252, for purposes of whether intervening rights would be generated.