Practice Tip: PTAB Guidance on Motions to Amend

During an IPR/PRG proceeding, a patent owner may once amend the challenged claims. The amendment can cancel a challenged claim or propose substitute claims. The proposed substitute claims are only “proposed claims.” They are not added to the patent unless the corresponding motion to amend has been granted by the Board.

Motions to amend must comply with 37 C.F.R. § 42.121, and can be filed after approval by the Board. Because the scope of a motion to amend is limited to a response to the grounds of unpatentability involved in the trial, the patent owner is not allowed to enlarge the scope of the claims of the patent or introduce new matter. Thus, for each proposed substitute claim, the motion must identify 1) the challenged claim which it is intended to replace; 2) a patentable distinction over the prior art; and 3) written description support in the original disclosure of the patent for the substitute claim. In two recent decisions, the Board provided guidance on these requirements.

In Idle Free Systems, Inc. v. Bergstrom Inc., IPR2012-00027 (JL), Paper 26 (June 11, 2013), the Board clarified that, in the absence of a special need, a challenged claim can be replaced by only one substitute claim.  Thus, the Board requires that all proposed claims be traceable to an original challenged claim as a proposed substitute claim for that challenged claim. While the Board did not identify what is sufficient to meet the “special need” requirement, the Board did explain that “a desire to obtain a new set of claims of different scope” is insufficient.

The Board also clarified that to show a patentable distinction some presentation must be made distinguishing proposed substitute claims from the closest prior art known to the patent owner.  The showing can be made through an expert declaration. Conclusory statements by counsel, however, are inadequate.

In Nichia Corp. v. Emcore Corp., IPR2012-00005 (JYC), Paper 27 (June 3, 2013), the Board outlined the requirements for showing written description support for proposed substitute claims. The Board noted that, pursuant to 37 C.F.R. § 42.121(b)(1), the patent owner is required to clearly identify the written description support from the original disclosure of the patent for each proposed substitute claim. The Board cautioned that merely indicating where each claim limitation is individually described in the original disclosure may be insufficient to demonstrate support for the claim as a whole. Moreover, while the proposed substitute claims do not need to be described verbatim in the original disclosure, the Board advised that a 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 similarly inadequate.