The PTAB rarely grants motions to amend claims of IPR proceedings, largely because of the standard requiring the patent owner to demonstrate the patentability of the amended claims. In a recent case, In re Aqua Products, Inc., 2015-1177 (Fed. Cir. May 25, 2016), the Federal Circuit affirmed this requirement placed on the patent owner. In this case, the PTAB had found that the patent owner did not demonstrate patentability of the amended claims. The case highlights lessons to be applied in motions to amend strategies.

In its motion to amend, Aqua argued for the non-obviousness of the claims over two references Henkin and Myers. Aqua argued that the references do not disclose or suggest a feature of the amended claim and that the references do not provide a person of ordinary skill in the art with a reason to combine the teachings. Aqua's motion to amend did not specifically include objective indicia of non-obviousness over the combination of Henkin and Myers.

The PTAB disagreed with Aqua's arguments. First, the PTAB found that Henkin discloses one of the asserted lacking feature. Further, the PTAB found that Henkin provided a reason for combining its teachings with Myers and that the combination of teachings of Henkin and Myers was neither unpredictable nor beyond the person of ordinary skill. Regarding additional limitations in the substitute claims, the PTAB found that there are a finite number of predictable solutions of ordinary skill and common sense instead of innovation.

On appeal, the Federal Circuit panel pointed to recent Federal Circuit precedent upholding the PTAB's standard for motions to amend. Thus, this panel chose to not revisit whether the PTAB may require the patent owner to demonstrate the patentability of substitute claims over the art of record. The Federal Circuit then decided the only remaining issue—whether the PTAB abused its discretion in failing to evaluate objective indicia of non-obviousness and the various new limitations. The panel held that there was no abuse of discretion.

This decision provides two important takeaway lessons with reference to obviousness. First, it is important to include strong arguments establishing the patentability of substitute claims, especially for the instituted combinations. Second, in establishing the patentability of each specifically proposed combination, if available objective indicia should be included to further bolster the patentability of the substitute claims.