Mission (Nearly) Impossible: Motion to Amend Claims

With the Patent Trial and Appeal Board recently granting a patent owner’s motion to amend claims for just the third time in its nearly three-year history, it seems like a good time to review the high bar the Board has set for such motions. See REG Synthetic Fuels, LLC v. Neste Oil OYJ, IPR2014-00192, Paper 48, 18-30 (PTAB June 5, 2015); Riverbed Tech. Inc. v. Silver Peak Sys. Inc., IPR2013-00402, Paper 35 (PTAB Dec. 30, 2014); Int’l Flavors & Fragrances Inc. v. United States, IPR2013-00124, Paper 12 (PTAB May 20, 2014).

As the moving party, a patent owner wishing to amend claims during a PTAB post-issuance proceeding must establish that it is entitled to the requested relief. 37 C.F.R. § 42.20. The Board has set out the following procedural and substantive requirements for a motion to amend claims:

  1. Timing: The motion must be filed with or before the Patent Owner Response to a petition and after conferring with the Board. 37 C.F.R. § 42.121(a).
  2. Formatting: The motion must be properly formatted and must include properly formatted claims. See 37 C.F.R. § 42.121(a), 80 Fed. Reg. 28561, 77 Fed. Reg. 48612, 48680, 48766. It is worth noting that recent rule changes provide a patent owner with a higher page limit of 25 pages and the opportunity to submit proposed claims as a claim appendix that does not count against the page limit. 80 Fed. Reg. 28561.
  3. Scope: The proposed claim amendment must respond to an instituted ground of invalidity and cannot enlarge the scope of any claim. 37 C.F.R. § 42.121(a).
  4. Written Description: The proposed amendment must be supported by the original specification and figures; no new matter may be entered. 37 C.F.R. § 42.121(a).
  5. Number of Claims: Only a “reasonable number” of proposed claim amendments are allowed. 37 C.F.R. § 42.121(a). The PTAB has usually interpreted this provision to require a roughly one-for-one substitution of canceled or invalidated claims.
  6. Content: The content of proposed claim amendments will be carefully scrutinized by the Board. The patent owner has the burden of proof to show by a preponderance of the evidence that the proposed claims comply with all sections of the patent statute. Idle Free Sys., Inc. v. Bergstrom, Inc., IPR2012-00027, Paper 26, 7 (PTAB June 11, 2013). Crucially, a patent owner must “persuade the Board that the proposed substitute claim is patentable over the prior art of record, and over prior art not of record but known to the patent owner.” Idle Free at 7 (emphasis added); see also REG Synthetic Fuels at 19 (“[patent owner]’s duty of candor to the Office requires that it discuss any relevant prior art not of record but known to it”). Some Board members have suggested that a patent owner should submit a certified prior art search or other good faith demonstration of the prior art known to the patent owner. [NOTE: please see our updated discussion of this requirement here].  In order to demonstrate patentability of the proposed amendment over the prior art, the Board requires that a patent owner include in its motion to amend the following: (1) claim constructions for new claim terms; (2) identification of and distinguishing features over closest prior art; (3) level of ordinary skill in the art; (4) how a person of ordinary skill in the art would view new claim elements. Idle Free at 7-8. Establishing these four facts will require the submission of an expert declaration.

In light of these exacting requirements, it is easy to see why so few motions to amend claims have been granted by the Board. Although legislation has been circulating on Capitol Hill recently that would make it easier for patent owners to amend claims (by, for example, allowing amendments as a matter of right rather than by motion), it appears that amending claims at the PTAB will be a difficult task for the foreseeable future.