Successful Motions to Amend Claims at the PTAB

In April, the USPTO released the results of a study on claim amendments in AIA proceedings. The study showed that of 118 Motions to Amend Claims filed at the PTAB, just six had been granted. The abysmal success rate of patent owners seeking to amend claims (just 5% by the PTO’s own numbers) has been a source of strong criticism of the PTAB.

For patent owners searching for a successful amendment strategy, we’ve collected the allowed claim amendments from those six successful motions to amend at the PTAB, which are presented below:

  1. International Flavors and Fragrances Inc. v. United States, IPR2013-00124, Paper 10 (Motion to Amend), Paper 12 (Final Written Decision; May 20, 2014).

Allowed amendment:

1-1

  1. Riverbed Technology, Inc. v. Silver Peak Systems, Inc., IPR2013-00402, Paper 25 (Motion to Amend), Paper 35 (Final Written Decision; December 30, 2014).

Allowed amendment (dependent Claim 13 found patentable):

2-1

2-2

  1. Riverbed Technology, Inc. v. Silver Peak Systems, Inc., IPR2013-00403, Paper 23 (Motion to Amend), Paper 33 (Final Written Decision; December 30, 2014).

Allowed amendment (dependent Claim 28 found patentable):

3-1

3-2

  1. Chicago Mercantile Exchange, Inc. v. 5th Market Inc., CBM2013-00027, Paper 21 (Motion to Amend), Paper 33 (Final Written Decision; December 17, 2014); Paper 38 (Order Granting-In-Part Patent Owner’s Request for Rehearing; March 23, 2015).

Allowed amendment (dependent Claim 54 found patentable):

4-1

  1. REG Synthetic Fuels, LLC v. Neste Oil Oyj, IPR2014-00192, Paper 30 (Motion to Amend), Paper 48 (Final Written Decision; June 5, 2015).

Allowed amendment:

5-1

  1. Shinn Fu Corp. v. The Tire Hangar Corp., IPR2015-00208, Paper 15 (Motion to Amend), Paper 24 (Final Written Decision; April 22, 2016).

Allowed amendment:

6-1

Other key decisions on motions to amend include several decisions which have been designated “representative” by the PTAB including:

Idle Free Sys., Inc. v. Bergstrom, Inc., IPR2012-00027, Paper 26 (PTAB June 11, 2013);

MasterImage 3D, Inc. v. RealD, Inc., IPR2015-00040, Paper 42 (PTAB July 15, 2015); and

Corning Optical Communications RF, LLC v. PPC Broadband, Inc., IPR2014-00441, Paper 19 (PTAB Oct. 30, 2014).