PTAB Allows Motion to Amend in IPR Challenging Neste Oil Patent

In a final written decision issued on June 5, 2015, the Patent Trial and Appeal Board (PTAB) granted a rare motion to amend, allowing Finnegan client Neste Oil Oyj to substitute four claims of its biodiesel patent in an IPR proceeding. The PTAB has only allowed motions to amend in three previous IPR proceedings.

REG Synthetic Fuels challenged Neste’s ‘492 patent in a petition filed in November 2013. The PTAB found that the 24 claims were invalid, prompting Neste to request a motion to amend. The Board said that Neste had satisfied the requirements to amend, including not enlarging the scope of the claims or introducing new matters, being responsive to a ground for unpatentability, proposing a reasonable number of substitute claims, and successfully supporting the proposed claims in the original disclosure.