To date, patent owners have struggled to obtain substitute claims for patents reviewed by the Patent Trial and Appeal Board in IPR proceedings. Through May 1, 2015, only 22 (6.16%) of proposed substitute claims evaluated by the Board have been granted.
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The number of patent owners pursuing substitute claims appears to be decreasing over time. In the period from January 1, 2014, through December 31, 2014, the PTAB considered 299 proposed substitute claims, and granted 22 such claims across three IPR proceedings: Int’l Flavors & Fragrances, Inc. v. United States, IPR2013-00124, Paper 12 (P.T.A.B. May 20, 2014), Riverbed Tech., Inc. v. Silver Peak Sys., Inc., IPR2013-00402, Paper 35 (P.T.A.B. Dec. 30, 2014), andRiverbed Tech., Inc. v. Silver Peak Sys., Inc., IPR2013-00403, Paper 33 (P.T.A.B. Dec. 30, 2014).
No proposed substitute claims have been granted in final written decisions filed between January 1, 2015, and May 1, 2015, based on a review of filings in the USPTO’s PRPS system. Moreover, patent owners have only proposed 55 total substitute claims in that same span, presenting a marked decrease in the rate at which patent owners have sought substitute claims in IPR proceedings compared to last year.
Patent owners may propose substitute claims in an IPR proceeding either by conceding the unpatentability of the corresponding instituted claims outright along with the proposed substitute claims, or by making the Board’s consideration of the substitute claims contingent on the instituted claims first being held unpatentable.
As discussed previously here, patent owners have struggled to meet the requirements of the Board to have substitute claims granted. There are a number of potential explanations, including stringent page limits, procedural nuances, and the myriad legal requirements imposed by the Board. While amendment practice may be changing before the Board—with extra pages being asked for and granted in some cases pursuant to Director Michelle Lee’s “Quick Fixes” blog—it seems that practitioners are increasingly choosing to forgo the substitute claim process altogether.