By Andrew Williams --
Just what does it take to amend your claims during an IPR proceeding before the PTAB? Of course, the America Invents Act ("AIA") specifically provides that Patent Owners may file one motion to amend the claims. AIA, § 316(d)(1). However, most people in the patent community are well aware that the PTAB has only granted one such motion, in a case in which the motion to amend was unopposed, and in which the patent owner was the United State of America! Therefore, it is understandable that most practitioners view the prospect of amending claims as futile. To appease these concerns, the PTAB has been issuing instructions and guidance for well over a year. In an early example, the Idle Free Systems, Inc. v. Bergstrom, Inc. case (IPR2012-00027) provided one of the first sets of guidance on motions to amend on June 11, 2013 (Paper 26), which is still cited regularly today. In fact, it can be found on the Patent Office PTAB Representative Decisions page under the heading "Motions to Amend." The Patent Office also released a message on its AIA Blog on May 5, 2014, entitled "How to Make Successful Claim Amendments in an AIA Trial Proceeding." Nevertheless, either no one was paying attention, or more likely, amending claims is not as easy as the PTAB has suggested it would be. In its latest attempt, a three-APJ panel released an order "On Motion to Amend Claims" on October 30, 2014 in the Corning Optical Communications RF, LLC v. PPC Broadband, Inc. case, IPR2014-00441 (Paper 19).
The Corning Optical guidance was issued after a telephone conference between the parties and Judges Jameson Lee, Josian C. Cocks, and Jacqueline Wright Bonilla. Specifically, the Patent Owner was satisfying its requirement "to confer" as found in 37 C.F.R. § 42.121(a). Nevertheless, the Board provided verbal guidance, followed by the issued order. Importantly, the Board authorized the Patent Owner to include its proposed substitute claim set as an appendix so as to not count toward the restrictive 15-page limit.
The Substitute Claim Set
The PTAB regulations require that the substitute claim set appear as a claim listing and be responsive to the ground of unpatentability. See C.F.R. § 42.221(a)(2)(i) and (b). Moreover, there is a presumption that for every claim at issue, only one substitute claim is reasonable. The Board warned, however, that this does not mean that the Patent Owner can simply maintain the same number of claims. Instead, each substitute claim must be traceable back to an original patent claim at issue. In addition, the Patent Owner should not eliminate any feature or element from the claims. If the Patent Owner believes that more than one substitute claim is required for one or more particular claims, they should "articulate a special circumstance to justify the request." Finally, the substitute claim set must identify what the changes are to the original claims, ideally with the use of brackets for deletions and underlining for additions.
Burden of Proof
The regulations provide that the Patent Owner bears the burden of proof in establishing it is entitled to amended claims. 37 C.F.R. § 42.20(c). The reason that is commonly given by the Office is that if the motion is granted, the claim set will be added to an issued patent without examination. Of course, this is contrary to the justification provided for the use of the Broadest Reasonable Interpretation standard for claim construction (which is used, in part, because the claims are allegedly being examined and can therefore be amended). Nevertheless, in general, the Patent Owner must show patentability.
An IPR can only be instituted based on citation to certain types of prior art (patents and printed publications) on 35 U.S.C. § 102 (anticipation) or § 103 (obviousness) grounds. However, with respect to showing that a substitute claim set is patentable, there is no such limitation. As we reported at the time, the Board in the Ariosa Diagnostics v. Isis Innovation Ltd. Final Written Decision, IPR2012-00022 (Paper 166) denied a motion to amend claims because the Patent Owner failed to show patentability under 35 U.S.C. § 101. As the Board stated, "when considering a motion to amend, we do not examine and allow or reject the substitute claims, but determine whether the patent owner has met its burden of establishing that it is entitled to the substitute claims that it seeks in its motion to amend" (emphasis in original). Important to this decision, however, was that the original claims had been found by a District Court to have failed the patent eligibility requirement of § 101. Nevertheless, if there is any question, it might be advisable for any Patent Owner to explain why the substitute claims are patent eligible (in addition to the other requirements related to patentability).
Writing Description Support
The regulations also provide that the Patent Owner must show where written description support can be found in the specification for the proposed substitute claims. 37 C.F.R. § 42.221(a)(2)(ii). This citation should be to the original disclosure, not the issued patent. Also, support must be shown for the entire claim, not just the newly added feature.
If the meaning of any newly added term can reasonably be thought to be in dispute, the Patent Owner should provide a proposed claim construction. If this is a means-plus-function, the corresponding structure, material, or act should be identified. Moreover, it is unsufficient to state that the term should be given its plain and ordinary meaning. Instead, such meaning should be provided with any supporting evidence.
Notwithstanding the outcome in the Ariosa Final Written Decision, the Board in this guidance noted that the Patent Owner must show patentability over the prior art if the trial was instituted over prior art. Of course, this demonstration is not limited to references cited by the Petitioner, but instead must account for all prior art. For example, for any new feature found in the substitute claims, "it should be revealed whether the feature was previously known anywhere, in whatever setting, and whether or not the feature was known in combination with any of the other elements in the claim." Luckily, the Patent Owner is not expected to be aware of everything that the hypothetical person ordinary skill in the art is, but it should reveal what it does know, and how it might be relevant. Of course, the Patent Owner should explain the level of skill in the art, ideally as it relates to the newly added claim limitation. It would also be useful to include any textbooks or conventional practices related to the added feature. And, as we have seen, conclusory statements of patentability are not useful.
Based on a review of the outcome of these motions, this requirement appears to be the reason most are not granted. Therefore, it might be instructive to look at the only case that granted (in part) a motion to amend -- International Flavors & Fragrances Inc. v. The United States of America (IPR2013-00124). That case related to a patent with methods for repelling arthropods (such as ticks and mosquitoes) using particular isolongifolenone analogs. The claim amendment sought to limit the broadest independent claim drawn to the genus by specifying a markush group of five analogs from which the isolongifolenone analog could be selected. The Patent Owner did reference the publication cited during institution as the "'apparent' closest prior art." The Board believed that the Patent Owner's statement was conclusory. However, the Patent Owner's explanation of what would have been understood by one of ordinary skill in the art carried the day (with the possible help of an expert declaration and citation to several publications).
Specifically, the Board noted the Takeda standard for determining the obviousness of small molecules: "it remains necessary to identify some reason that would have led a chemist to modify a known compound in a particular manner to establish prima facie obviousness of a new claimed compound." Takeda Chem. Indus., Ltd. v. Alphapharm Pty., Ltd., 392 1350, 1357 (Fed. Cir. 2007). In this case, the Patent Owner cited to several references demonstrating that minor structural changes to the relevant compounds can result in very different properties, especially with regard to repelling insects. Because there was not a "small or easily traversed" number of molecules disclosed in the prior art references, and the Patent Owner was able to demonstrate why one of ordinary skill in the art would not have modified the lead compound, the Board found that the Patent Owner established patentability of the substitute claim set.
Not every case is going to have such a straight forward proof of the negative -- that the prior art does not render the claims unpatentable. Nevertheless, if possible, a Patent Owner would be well advised to cite to prior art references that establish that the substituted claims are both not present in the prior art, nor rendered obviousness in the view of the art. This will help to turn a negative proof (it's not unpatentable) into a positive one (the prior art establishes that one skilled in the art would not have arrived at the claimed invention).
It can only be hoped with this newly issued guidance for seeking to amend claims in IPR proceedings will result in making it easier to amend claims. We will continue to monitor such motions, to see if Patent Owners are heeding the advice of the PTAB, or to see if it is truly futile to seek to amend claims, regardless what the PTAB has been recently saying.