The PTAB granted-in-part the first opposed motions to amend in two IPR trials concerning network memory systems. Riverbed Technology, Inc. v. Silver Peak Systems, Inc., IPR2013-00402 (Dec. 30, 2014) (Paper 35 ); IPR2013-00403 (Dec. 30, 2014) (Paper 33). In both decisions, the PTAB granted the motions to cancel all original claims and add two independent proposed substitute claims, but denied with respect to the remaining four proposed substitute claims.

In IPRs, PGRs, and CBMs, the Patent Owner may move to amend the claims. The PTAB has provided guidance regarding the requirement for motions to amend in four representative decisions: Nichia; Idle Free; Int’l Flavors; and Corning Optical. For example, the PTAB identified some “shoulds” for the Patent Owners, including:

  • identify specifically the feature(s) added to each substitute claim;
  • construe new claim terms;
  • present technical facts and reasoning that the added feature(s) is patentable over:
    • the prior art of record, and
    • the prior art not of record but known to the patent owner;
  • make some representation about the specific technical disclosure of the closest prior art known to the patent owner; and
  • show patentable distinction for certain proposed substitute claims over others (see Part II).

The PTAB also noted that the Patent Owner “can” rely on an expert to show:

  • the significance and usefulness of the feature(s) added, from the perspective of one with ordinary skill in the art; and
  • the level of ordinary skill in the art, in terms of ordinary creativity and the basic skill set possessed.

Despite these “shoulds,” during the Riverbend proceedings, the Patent Owner:

  • did not submit an expert declaration;
  • stated it believed the references applied in the petition were the most relevant;
  • discussed only one reference not cited in the petition; and
  • did not set forth the level of ordinary skill in the art.

The PTAB also noted that the Petitioner did not:

  • dispute that the substitute claims did not enlarge the scope of the claims;
  • dispute that the claims had sufficient written description support;
  • dispute the proposed claim interpretations; and
  • propose a specific combination of references that would have rendered the claims obvious as a whole.
  • Patent Owners seeking insight from these decisions will appreciate that the PTAB’s guidance is just that, guidance. As yet, no motion to amend has been granted as a result of following this advice to the letter.
  • Petitioners seeking insight from these decisions will appreciate the benefit of developing statutory- and regulatory-based arguments in addition to addressing any failure by the Patent Owner to follow the PTAB’s guidance.