Corning Optical Commc’ns RF, LLC v. PPC Broadband, Inc.

Detailing the requirements for amending claims in an inter partes review (IPR), the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (PTAB or Board) explained that a patent owner must establish patentability of a new claim over all known prior art, not only the references raised in the proceeding.  Corning Optical Commc’ns RF, LLC v. PPC Broadband, Inc., Case No. IPR2014-00441 (PTAB, Oct. 30, 2014) (Lee, APJ.).

Corning Optical initiated an IPR of PPC Broadband’s patent.  During the proceeding, the parties telephonically discussed with the Board PPC’s intent to move to amend the claims.  The PTAB offered PPC verbal guidance about the requirements of such a motion, which was transcribed by a court reporter.  The PTAB also provided additional written guidance to PPC in its order.

The PTAB specified its universal expectations (and requirements) for amending claims during an IPR proceeding.  Only two amendments are permissible—cancellation and substitution.  Although a claim may be cancelled without condition, a substitution may only be made if the claim being replaced is first deemed unpatentable or cancelled.  Barring special circumstances, each substitute claim must be tied a single original claim.  The substitution—usually an addition of an element to the original claim—should respond to the ground of unpatentability applicable to the original claim.

Because a substitute claim would not otherwise be examined, the patent owner must further establish the patentability of the claim.  Even if the substitution is premised on a ground of unpatentability over specific prior art, the patent owner must show patentability over all known prior art.  It is not sufficient for the patent owner to distinguish only over those references raised by the petitioner.  Rather, the patent owner must explain whether the newly added matter “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.”  If it were known, the patent owner must explain why the combination of the added and original claim elements would not have been obvious.  Even though a patent owner is not expected to know everything, it is expected to reveal its relevant knowledge.

The PTAB also identified other requirements for substituting a claim.  For example, the patent owner must identify written description support for the entirety of a substitute claim in the original disclosure, not the issued patent specification.  In another example, the PTAB noted that if a substitute claim introduces a new term whose meaning can be reasonably anticipated to be in dispute, the patent owner must propose a construction for that term.  If the plain and ordinary meaning should apply, then that meaning must be defined and supported by evidence.