Amending claims during an inter partes review (IPR) proceeding is not like amending claims during ex parte prosecution or a reexamination procedure.  Generally, the patent owner has only one chance to propose substitute claims for challenged claims on a one-to-one basis, and must meet several requirements in doing so.  See 35 U.S.C. § 316(a)(9); 37 C.F.R. § 42.121.

Under Patent Trial and Appeal Board (“Board”) rules, the moving party, in this case the patent owner, has the burden of proof.  The Board rules for IPR proceedings (Part 42 of 37 C.F.R.) do not specify the full extent of the burden on the patent owner in a motion to amend the patent.  To amend its claims, the patent owner must show support in the original disclosure of the patent for each claim that is added or amended and in any earlier-filed disclosure for each claim for which benefit of the filing date of the earlier filed disclosure is sought.  See 37 C.F.R. § 42.121(b).  This may be done using a claim chart in an appendix to the motion. In Nichia Corp. v. Emcore Corp., IPR2012-00005, Paper 68 (PTAB June 3, 2013) at 49-56, the Board stated that if the language of a proposed substitute claim does not appear in the original disclosure, the patent owner must explain why a person of ordinary skill in the art would have recognized that the inventor possessed the claimed subject matter as a whole.

In interference proceedings, the Board has long applied a rule stating that a party moving to add or amend a claim must show that the claim is patentable.  See 37 C.F.R. § 41.208(c)(1).  The extent of the burden of showing that a proposed claim is patentable in IPR proceedings was explained by the Board in Idle Free Sys., Inc. v. Bergstrom, IPR 2012-00027, Paper 26 (PTAB June 11, 2013), designated by the Board as an “informative opinion.”  In Idle Free, the Board stated that the patentee had the burden to “make a showing of patentable distinction over the prior art of record, and over prior art not of record but known to the patent owner.”  Id. at 7.  The Board stated that some “representation should be made about the specific technical disclosure of the closest prior art known to the patent owner, and not just a conclusory remark that no prior art known to the patent owner renders obvious the proposed substitute claims.”  Id. at 8.  A showing of patentable distinction could rely on declaration testimony of a technical expert.  And, indeed, such an expert declaration would be a virtual requirement because a conclusory statement by counsel was deemed facially inadequate.

The Federal Circuit has addressed the burden on patentees, but the issue remains unresolved.  A Federal Circuit decision in February of 2016 addressed the burden on a patent owner who wishes to amend claims during an IPR proceeding.  Nike, Inc. v. Adidas AG, 812 F.3d 1326 (Fed. Cir. 2016).  The burden to show that an amended or added claim is patentable, was placed squarely on the patent owner.  In Nike, the patent owner challenged the allocation of burden to the patent owner on the basis of a statutory provision that “the petitioner shall have the burden of proving a proposition of unpatentability by a preponderance of the evidence.”  Id. at 1333; 35 U.S.C. § 316(e).  This argument did not persuade the Federal Circuit, but has been raised again in a case that remains unresolved.  In re Aqua Prods., Inc., 823 F.3d 1369 (Fed. Cir. 2016) (vacated for en banc review).

The Nike decision limited the burden on a patent owner.  In Nike, the patent owner had attempted to carry its burden to address prior art that was not in the record of the proceedings by simply stating that its proposed claims were patentable over prior art known to the patent owner, but not part of the record.  The Board had held that such a statement was facially inadequate.  However, the court determined that such statement is adequate in the absence of any suspicion that a patent owner has not met its duty of candor.

Thus, Nike established the burden of showing that a proposed substitute claim is patentable as addressing the prior art of record, and providing a reasoned statement that the claim is patentable over any prior not of record, but known to the patent owner.

However, the statutory burdens raised in Nike are not yet resolved.  In August of 2016, In re Aqua Prods., Inc., 823 F.3d 1369 (Fed. Cir. 2016) addressed the issue of burdens again.  The decision has been vacated for a pending en banc review.  In its vacated decision, the court held that under its precedents, including Nike, the burden to show that proposed claims were patentable rested on the patentee.  Further, the Court held that the Board need only address specific arguments that the patentee raised in its motion.  The court found that the patentee had presented arguments regarding only one of four limitations added to its proposed claims, and that the Board had adequately rebutted that argument.

In requesting en banc review, the patent owner argued that the only burden required by the statute (35 U.S.C. §  316(d)) is the burden to show that the proposed claims do not add new matter and do not expand the scope of the claims of the patent.  The patent owner maintained that the burden to show unpatentability under the statute (35 U.S.C. §  316(e)) rests with the petitioner.  The patent owner contends that the clear intent of the statute was that amendments meeting the requirements of § 316(d) be entered early in the proceeding that that petitioner then has the burden of proving unpatentability under § 316(e).

If the patent owner in Aqua Products succeeds in its argument, the conduct of IPR proceedings may be significantly altered.  Oral argument in the en banc review occurred on December 9, 2016, and the patent bar eagerly awaits a decision.  Twenty parties representing a wide range of industry and academic interest have appeared amicus curiae in the appeal.

While practitioners await a decision in Aqua Products, it is still possible to consider best practices in light of the current state of the law in the meantime.  All arguments that a party wishes to rely on should be raised and argued in a motion.  Some panels have required that the patent owner explicitly explain the meaning of any terms added in proposed substitute claims as a part of the demonstration of patentability.  In Xilinx, Inc. v. Intellectual Ventures I LLC, IPR2013-00029, Paper 49 (PTAB Mar. 10, 2014), the panel, in denying a motion to amend, explained that a statement that new claim terms should be given their plain and ordinary meaning was insufficient to determine whether the claims were patentable.

Another issue to consider is that unless a patent owner wishes to unconditionally cancel some or all of its challenged claims, the motion to amend should only request substitution of the proposed claims.  As stated in Corning Optical Communications RF, LLC v. PPC Broadband, Inc., IPR2014-00441, Paper 19, at 2 (PTAB Oct. 30, 2014), 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.

Furthermore, it must be noted that under the Board rules, proposed substitute claims must be responsive to a ground of unpatentability raised in the motion and cannot expand the scope of the claims that the proposed claims will replace.  See 37 C.F.R. § 42.121.

In summary, motion to amend practice will likely continue to develop and evolve, particularly in view of the pending Aqua Products case.  In the meantime, when presenting a motion to amend, a patent owner may wish to consider the following factors:

  1. Style the motion to amend as a request to conditionally substitute claims unless the patent owner desires to cancel some or all challenged claims unconditionally.
  2. Present the proposed claims in an appendix, clearly showing the changes made in the proposed claims.
  3. Provide a detailed claim construction explaining the meaning of any new claim term.
  4. Present a claim chart in an appendix showing support for the proposed claims in the original disclosure and any application for which benefit is desired.
  5. Provide an explanation of the written description support if the language of the proposed claim as a whole is not found identically in the disclosure.
  6. Identify which challenged claim each proposed claim is meant to replace.
  7. Explain how the proposed claim addresses a patentability challenge raised by the petition.
  8. If more than one proposed claim is to replace a challenged claim, explain why more than one claim is reasonable (e.g., the proposed claims are separately patentable).
  9. Show, in detail, the patentability of the proposed claim over the closest prior art.
  10. Address patentability of the proposed claim over all of the prior art of record.
  11. Provide a statement that the proposed claims are patentable over all prior art not of record, but known to the patent owner.
  12. Provide an expert declaration to provide reasoned support for issues of claim support and patentable distinctness over all prior art of record, all known prior art not of record, and any other evidence of non-obviousness.