Last week the PTAB sought to clarify the somewhat controversial requirement that a patent owner must “persuade the Board that the [amended] claim is patentable over the prior art of record, and over prior art not of record but known to the patent owner.” Idle Free Sys., Inc. v. Bergstrom, Inc., IPR2012-00027, Paper 26, 7 (PTAB June 11, 2013). Some PTAB commentators had previously suggested that a patent owner should go so far as to submit a certified prior art search in order to demonstrate good faith compliance with the broad language of Idle Free. This requirement is one of many which makes it extremely difficult for a patent owner to successfully amend claims at the PTAB. (For our full discussion of a Motion to Amend Claims, click here). Continue reading PTAB Clarifies Meaning of “Prior Art … Known to the Patent Owner”
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).