I. Introduction

The Leahy-Smith America Invents Act (“AIA”) allows a patent owner to amend the claims of a challenged patent during an AIA proceeding, such as an inter partes review (“IPR”). The patent owner may amend in one of two ways: cancel any challenged claim or, for each challenged claim, propose a reasonable number of substitute claims.1 An amendment filed in an IPR may not broaden the scope of the claims.2 The United States Patent and Trademark Office (“USPTO”) released regulations for filing motions to amend. The regulations allow a patent owner to file one motion to amend after conferring with the Patent Trial and Appeal Board (“PTAB” or the “Board”).3 The length of the motion to amend is limited to fifteen pages.4 The amendment proposed in the motion must respond to an asserted ground of unpatentability and must not enlarge the scope of the claims or add new subject matter.5 The regulations state that there is a presumption that only one substitute claim is needed to replace each challenged claim.6 Additionally, the regulations require the motion to include a claim listing and set forth the written description support for each amended claim.7

II. PTAB Guidance

The PTAB has granted only three motions to amend during the first two and a half years of IPR proceedings. The USPTO has a practice of issuing informative opinions to give guidance and it has done so to assist patent owners in drafting successful motions to amend. The guidance has addressed many of the requirements under § 42.121.

A. The patent owner must confer with the Board.

Prior to filing a motion to amend, the patent owner must confer with the Board, however the patent owner is not required to have a fully developed set of claims at this time.8 The Board has stated that the purpose of the conference is to provide the patent owner with an opportunity to obtain guidance from the Board, such as information related to a reasonable number of substitute claims or information on whether the amendments respond to a ground of unpatentability.9

B. The substitute claims should be traceable to a challenged claim.

37 C.F.R. § 42.121(a)(2)(ii) states that absent special circumstances, a patent owner may present only one substitute claim per challenged claim.10 In light of this requirement, a motion to amend should specifically identify the challenged claim that the substitute claim is intended to replace such that all substitute claims are traceable to a challenged claim.11 A patent owner is not in compliance with this rule simply by retaining the same number of claims before and after the amendment.12 The Board has stated that a desire to obtain a new claim set with a different scope is not a special circumstance that warrants a deviation from the one substitute claim per challenged claim rule and should be pursued via a different USPTO proceeding.13

Any claim that would have a changed scope after the amendment should be included in a claim listing as a proposed claim with a new claim number.14 An unchanged dependent claim that depends from a cancelled claim retains its same scope and does not need to be included in the claim listing.15 The claim listing should show the amendments with respect to the original claim, however the Board requires no specific format for showing the changes.16 While the PTAB originally required the claim listing to be part of the motion 17, the Board has since allowed patent owners to include the claim listing in an appendix that does not count toward the 15-page limit.18

C. The amendment must be responsive to a ground of unpatentability and may not enlarge the scope of the claims.

A substitute claim may only narrow the scope of a challenged claim and must be responsive to an alleged ground of unpatentability.19 To be responsive to an asserted ground of unpatentability, a proper substitute claim must include or narrow each feature of the challenged claim that the substitute claim is intended to replace.20 If a dependent substitute claim is presented as patentable on the same basis as the independent claim from which it depends, the patent owner should provide a meaningful reason for making the additional amendments.21Without providing a meaningful reason, the Board may find the new features in the dependent claims unresponsive to an alleged ground of unpatentability.22

D. The motion should identify a patentable distinction for each substitute claim.

Under 37 C.F.R. § 42.20(c), the patent owner, as the moving party, bears the burden of showing that each proposed claim in the motion to amend is patentable.23 The patent owner should specifically identify the feature(s) added to each proposed claim and provide technical facts and reasoning about the feature(s) sufficient to persuade the Board that the proposed claim is patentable over both the prior art of record and the prior art known to the patent owner.24 If necessary, the patent owner should also provide a construction of any new claim terms.25 In the event that the patent owner proposes plain and ordinary meaning for a term, the plain and ordinary meaning should be provided along with supporting evidence.26

While the patent owner is not expected to know everything a person of ordinary skill in the art would know, the patent owner is expected to reveal what it does know and the relevance of the information.27 In discussing the patentability of the proposed claims, the patent owner should make “[s]ome representation” about the disclosure of the closest known prior art and “not just a conclusory remark that no prior art known to the patent owner renders obvious the proposed substitute claims.”28 The patent owner may rely on a declaration of a technical expert.29 The technical expert may discuss, from a perspective of one having ordinary skill in the art, the significance and usefulness of the added feature(s) and details on the level of ordinary skill.30

In the event that the Board allows a patent owner to propose more than one substitute claim for a challenged claim, the patent owner must show a patentable distinction for the additional substitute claims over all other substitute claims for the same challenged claim.31 Absent such a showing, the Board may deny entry of the additional substitute claims or group the claims to stand or fall together.32

E. The motion must identify the written description support for the substitute claims.

The patent owner bears the burden of identifying written description support for the proposed claims in the original disclosure of the patent.33 The patent owner should cite to the application as filed, not to the patent as issued.34 The subject matter of the proposed claims need not be described verbatim in the original disclosure, but the patent owner should provide an explanation as to why a person having ordinary skill in the art would have recognized that the inventor possessed the claimed subject matter.35 It is inadequate for the patent owner to cite to support for the added feature(s), rather the patent owner must show support for the claimed combination.36

III. Decisions Granting Motions to Amend

The PTAB has granted three motions to amend during the first two and a half years of IPR proceedings. The first successful motion was not opposed by the petitioner, and the Board found that the patent owner had established that the prior art did not disclose the subject matter of the substitute claims.37 The second and third successful motions to amend occurred in related IPRs.38 The petitioner opposed the amendments in both cases. The challenged patents related to network memory systems.39 The patent owner proposed amendments that added details of a specific method for performing data de-duplication.40 In the motion to amend, the patent owner analyzed both the prior art included in the petition and an additional reference and how the added limitations were not disclosed or taught in the prior art.41 Additionally, the patent owner discussed the knowledge of a person having ordinary skill in the art by referencing both art cited during the original prosecution of the patent and the references asserted in the petition.42

The petitioner argued that the patent owner failed to distinguish the claims from all prior art of which the patent owner was aware.43 The PTAB rejected this argument based on the patent owner’s citation of references other than the references asserted in the petition.44 The petitioner also argued that the patent owner failed to provide a declaration from a technical expert to establish the level of ordinary skill in the art.45 While the Board recognized that such testimony may be helpful, the Board stated that a declaration is not a prerequisite for a successful motion to amend.46

The Board found the patent owner’s discussion of how the proposed claims differed from the prior art persuasive and supported by the record.47 The patent owner identified the de-duplication systems described by the prior art and explained how the substitute claims described a different approach.48 The Board also found that the patent owner’s assertions regarding the key aspects of the prior art and whether the substitute claims would have been rendered obvious unrebutted as the Petitioner did not propose any specific combination of references that would render the substitute claims obvious.49

While the patent owner successfully proved patentability of some amended claims, the Board denied part of the motion to amend addressing proposed amendments to dependent claims. The Board found that the patent owner had not established patentability of the dependent claims.50 Amendment of a dependent claim requires a showing of a patentable distinction over the independent claims from which the proposed claim depends.51 To determine whether a patentable distinction existed, the Board assumed the independent claim to be prior art.52 The patent owner failed to account for the independent claim when arguing that the proposed substitute dependent claims were patentable over the independent claim.53 As a result, the Board found that the patent owner failed to show a patentable distinction between the proposed dependent claims and their parent claims and thus denied the motion to amend with respect to the dependent claims.54

IV. Conclusion

Amending claims during an AIA proceeding is not impossible, but patent owners who wish to amend are challenged to satisfy the requirements within fifteen double-spaced pages. The amendments should focus on features for which the patent owner can provide a substantive discussion of the prior art known to the patent owner, the level of ordinary skill in the art, and why the proposed amendments render the substitute claims patentable. Additionally, the patent owner should propose a construction of any new claim terms and identify the written description support for the substitute claims. If the patent owner wishes to have more freedom to amend the claims, the patent owner may wish to seek a different proceeding at the USPTO, such as a reissue application or an ex-parte reexamination.