When throwing stones at birds, the Riverbed decisions highlight that Patent Owners and the Board may have different views on which bird got hit by which stone. The Patent Owner saw two stones hitting two birds, but the Board saw two stones hitting one bird. It is time to put on the Board’s substitute goggles.

One might reasonably expect that if a substitute independent claim is patentable over the art, then any dependent claim would be similarly patentable. Idle Free, however, outlines three scenarios, noting when the patent owner should show a claim is patentably distinct over other proposed substitute claims, i.e., treating them as prior art. In the Board’s view, proposed claims may amount to more than one permissible substitute claim for each challenged claim. See also 37 CFR § 42.121(a)(3).

Scenario 1: More Than One Proposed Substitute Claim for A Challenged Claim

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Scenario 2: Only Independent Proposed Substitute Claim Adds New Feature(s)

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Scenario 3: Dependent Proposed Substitute Claims Also Add New Feature(s)

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In Riverbed Technology, Inc. v. Silver Peak Systems, Inc.IPR2013-00402 (Dec. 30, 2014) (Paper 35); IPR2013-00403 (Dec. 30, 2014) (Paper 33), the Board granted motions to amend, adding only two independent claims. But the Board denied two dependent substitute claims because the Patent Owner failed to show a patentable distinction between them and their (granted) independent substitute claims (i.e., Scenario 3).

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If the Patent Owner had not added an additional feature to claim 14 or had added that feature to claim 13 instead, then claim 14 seemingly would have been granted (Scenario 2).

The Riverbed decisions reveal that, in the Board’s view, the presence of a new feature in a dependent substitute claim, which (1) is not included in the original claim, (2) is not included in the parent substitute claim, and (3) does not render the claim patentably distinct from the parent substitute claim, means that (a) the claim does not respond to a ground of unpatentability but also (b) amounts to an improper second proposed substitute claim with the parent substitute claim viewed as the first substitute (i.e., Scenario 1).