Strict Limits on Claim Amendments During IPR

The patent statute permits a patent owner to file one motion to amend its claims after an IPR is instituted. In practice, however, the process is not so simple. At the recent IPO Annual Meeting in Boston, Lead Administrative Patent Judge, Hon. Michael Tierney, pointed to a decision in Idle Free Sys. Inc. v. Bergstrom. Inc. as an example of the Board’s approach to claim-amendment practice.

Under 37 C.F.R. § 42.121(a), a patent owner must confer with the Board before filing a motion to amend. Although the decision accepts that “it was not unreasonable for Bergstrom to have considered the initial conference call as satisfying the conferring requirement,” it nevertheless dismissed the patent owner’s motion to amend for failing to confer with the Board “about the specific amendments contemplated.”

The Board then provided extensive guidance for a proper motion to amend. The Board noted that § 42.121(a)(3) provides for a “reasonable number” of substitute claims, but with the express presumption that “only one substitute claim would be needed to replace each challenged claim.” Thus, "in the absence of special circumstance, a challenged claim can be replaced by only one claim.” Without clarifying what would constitute a “special circumstance,” the Board explained that “a desire to obtain a new set of claims having a hierarchy of different scope” would not suffice. The patent owner should also identify on a claim-by-claim basis the “contingency of substitution, e.g., which [substitute] claim for which [challenged] claim and in what circumstance.”

The Board also emphasized that IPR was not a permissible forum for broadening claim scope or remodeling claim structure according to a different strategy. 37 C.F.R. § 42.121(2)(i) only permits amendments responsive to grounds of unpatentability raised at trial, and a proposed substitute claim would not be responsive to an alleged ground of unpatentability if it “does not either include or narrow each feature of the challenged claim being replaced.” Moreover, because the patent owner bears the burden of demonstrating patentability of the proposed claims under 37 C.F.R. § 42.20(c), the patent owner should identify the feature(s) added to each substitute claim and explain how the proposed claims are patentable over both the prior art of record and any additional prior art known to the patent owner.

Thus, Idle Free highlights the limitations for amending claims during an IPR. As the Board suggested, patent owners may consider ex parte reexamination or reissue, perhaps concurrently with the IPR, to pursue claim amendments not permissible during IPR.