The Patent Trial and Appeal Board (PTAB) has now released several dozen final decisions in its trials for inter partes and covered business methods reviews, and a trend not favoring patent owners is developing. The vast majority of the PTAB’s decisions have found all of the patent claims challenged in the trials to be invalid.
A motion to amend that offers substitute claims in place of the original patent claims is a procedure in PTAB review proceedings that, in theory, might be used by a patent owner to tailor its claims and increase its chances of emerging from a post-grant trial with at least some claims for its patent. But to date the PTAB has only granted a single motion to amend in a post-grant trial, while denying every other motion to amend because the patent owners have failed to meet the stringent requirements for the content of such motions, or because the patent owners have not convincingly demonstrated that the substitute claims are patentable. In denying the motions, the PTAB has distinguished a post-grant trial from ex parte patent examination proceedings, noting that the claims proposed in a motion to amend are not entered automatically, but rather the substitute claims are only added if the patent owner satisfies its burden of proof, by showing adequate written description support for the substitute claims and demonstrating the patentability of the claims over the prior art.1
A close look at the PTAB’s requirements and decisions sheds light on the difficult (but not impossible) burden that must be overcome for a patent owner to persuade the PTAB to grant its motion to amend.
Format and Content Requirements for Motions to Amend
The rules start with detailed procedural requirements that a patent owner must face when drafting a motion to amend. The length of the motion is limited to fifteen pages, using double spaced, fourteen point font.2 Within that fifteen page limit, the motion must include a claim listing showing each proposed claim, and the claim listing must be provided in the body of the motion, not in an appendix.3 Thus, after providing nothing more than a listing of the substitute claims, the patent owner may be left with only a small amount of space for substantive arguments.
1 IPR2013-00050, Final Written Decision (Paper 77), p. 42.
2 37 C.F.R. §§ 42.6, 42.24(v).
3 37 C.F.R. §§ 42.121(b), 42.221(b).
The PTAB also requires the patent owner to show in its motion that it is entitled to amend the patent claims by (i) construing the substitute claims, (ii) addressing the manner in which the substitute claims are patentable over the prior art, (iii) identifying the closest known prior art,
(iv) addressing the level of ordinary skill in the art at the time of the invention, and (v) discussing how an artisan would have viewed newly recited elements in the substitute claims in light of what was known in the art.4 Given all the necessary discussion, it will be a challenge for a patent owner in many cases just to stay within the fifteen page limit. And the PTAB will look unfavorably on attempts to circumvent the fifteen page limit, for example, by providing portions of the discussion required for a motion to amend in an expert declaration.5
Patent owners have sought permission to exceed the fifteen page limit, but the PTAB has been generally unreceptive to such requests and has only authorized additional pages when the patent owner provides a compelling rationale for the request. “Complexity” of the case is not necessarily a compelling rationale, as even in cases involving long claims and complex subject matter the PTAB has only granted a limited number of additional pages in response to patent owners’ requests (e.g., three or four pages).6 One situation where the PTAB has been generally receptive to allowing additional pages in motions to amend is when the patent owner also agrees
not to file a patent owner response in addition to a motion to amend.7 By not filing a patent
owner response, however, the patent owner is effectively giving up on the original claims and will be limited to establishing the patentability of the substitute claims in the trial.
The patent owner is also restricted as to the number and scope of claims it can present in a motion to amend. In particular, the patent owner can only propose substitute claims for the original, challenged claims, and there is a presumption that only one substitute claim is needed for each original patent claim.8 The proposed substitute claim must be traceable back to the original claim that it is replacing.9 For example, claim Y can only be named as a substitute for claim X if claim Y includes all of the features of claim X.10 Indeed, by rule, a substitute claim may not enlarge the scope of the original claims.11
4 37 C.F.R. §§ 42.121(b), 42.221(b)(i), see, e.g., IPR2013-00109, Final Written Decision (Paper 16), p. 55.
- IPR2013-00050, Final Written Decision (Paper 77), p. 44 n. 12.
- See IPR2013-00194, Order Conduct of the Proceeding (Paper 30), p. 2.
- See, e.g., IPR2013-00178, Order Conduct of Proceeding (Paper 36), p. 2.
8 37 C.F.R. §§ 42.121(3), 42.221(3).
- IPR2013-00194, Order Conduct of the Proceeding (Paper 30), p. 3.
11 37 C.F.R. §§ 42.121(2)(ii), 42.221(2)(ii).
The High Bar Set by the PTAB for Motions to Amend
The PTAB has made clear that, in accordance with 37 C.F.R. § 42.20(c), the patent owner bears the burden of demonstrating the patentability of the substitute claims presented in a motion to amend.12 The PTAB has also refuted the idea that the burden can be shifted to the petitioner to show that the proposed substitute claims are not patentable.13
The patent owner must make a strong showing in its motion to amend in order to meet the burden imposed by the PTAB. Not only must the patent owner demonstrate the patentability of the substitute claims over the prior art references applied by the petitioner against the original claims, but the patent owner must also demonstrate patentability over the prior art in general.14 This showing must include sufficient underlying facts regarding any feature added by the proposed substitute claims.15 For instance, the PTAB has indicated that “it should be revealed whether the feature was previously known anywhere, in whatever setting, and whether or not the feature was known in combination with any of the other elements of the claim.”16 A conclusory statement to the effect that the closest prior art are the references of record is not sufficient.17 These requirements are reverse of that which is required in other proceedings before the Patent Office. For example, in ex parte patent application prosecution, the Patent Office must first set forth a prima facie rejection, and then the patent applicant need only respond with a showing of how the claims are patentable over the references applied in the rejection.
A further requirement is that the patent owner must show where written description support in the patent can be found for each proposed substitute claim.18 The patent owner’s showing must demonstrate support for the entire combination as claimed, not just the added features in isolation.19 And the PTAB has refused to consider whether the substitute claims are in fact patentable over prior art when the patent owner has failed to provide a detailed showing of where written description support for the substitute claims can be found.20 This showing is again greater than what is usually required in other proceedings before the Patent Office, such as ex parte prosecution, where Examiners will often allow patent applicants to assert generally that claim amendments are supported by the originally filed disclosure.
- See, e.g., IPR2013-00419, Order Conduct of Proceeding (Paper No. 32), p. 4
- IPR2013-00050, Final Written Decision (Paper No. 77), p. 47.
- IPR2013-00419, Order Conduct of Proceeding (Paper No. 32), p. 4
- Id. (emphasis added).
- Id. at 5.
18 37 C.F.R. §§ 42.121(a)(2)(ii), 42.212(a)(2)(ii).
- IPR2013-00419, Order Conduct of Proceeding (Paper 32), p. 4.
- IPR2013-00050, Final Written Decision (Paper 77), p. 47.
Strategies For Motions to Amend and Alternatives
Given the limitations and requirements for a motion to amend, and given that the PTAB has yet to grant a motion, the question becomes whether a patent owner should even expend the effort to file such a motion.
On the one hand, a patent owner might want to give it a shot—after all, the substitute claims in a motion to amend are treated merely as a contingency that will only be considered if the PTAB finds that the original claims are unpatentable.21 On the other hand, while not strictly an admission regarding the original claims, a patent owner should consider whether a motion to amend would suggest subconsciously to the PTAB judges that the patent owner has questions on the patentability of the original claims, thereby influencing the final decision.
Another question would be whether the PTAB would possibly “err on the side of caution” and find in a close case that the original claims are not patentable, but that substitute claims in a motion to amend are patentable. What is more, when considering whether to fight for the original patent claims or pursue substitute claims, a patent owner will need to be mindful that substitute claims, even if obtained, are subject to intervening rights: a third party will not be
liable for infringing the substitute claims before the completion of the review proceeding.22
The PTAB’s decisions in cases where it found some of the original patent claims patentable shed light on which arguments in support of substitute claims might be included for a successful motion to amend. The decisions make clear that a successful motion to amend will necessarily include a detailed discussion setting forth the reasons why the substitute claims should be deemed patentable. And the reasons set forth must be supported by an expert declaration. Indeed, in one of the few PTAB decisions that has found challenged claims patentable, the PTAB gave substantial weight to expert testimony explaining how features of the claim were not found in the prior art.23
Along these lines, the PTAB recently granted a motion to amend for the first time.24 In that case, the Patent Owner filed a motion to amend with substitute claims directed to analogs of a compound taught by prior art.25 The Patent Owner presented evidence in its motion that small changes in the structures of the relevant types of compounds could result in compounds with very different properties.26 The PTAB acknowledged the Patent Owner’s argument, finding that the prior art did not provide a reason to modify the prior art compound to arrive at the
- See, e.g., IPR2013-00419, Order Conduct of Proceeding (Paper 32), p. 2.
22 35 U.S.C. §§ 318(c), 328(c).
- IPR2012-00042, Final Written Decision (Paper 60), pp. 31-32.
- IPR2013-00124, Final Written Decision (Paper 12).
25 Id. at pp. 3-4, 7-9.
- Id. at pp. 12-16.
compounds in the substitute claims and that the prior art did not provide a reasonable expectation
that modifications to the prior art compound would result in a compound having the desired properties.27 The PTAB therefore concluded that the preponderance of the evidence supported the patentability of the Patent Owner’s substitute claims and granted (in part) the Patent Owner’s motion to amend. 28
The PTAB has suggested that, as alternatives to amending claims in post-grant trials, other types of proceedings before the Office, such as ex parte reexaminations or reissue applications, may be better vehicles to pursue alternative claims.29 And there certainly are far fewer restrictions on the patent owner/applicant’s ability to amend and add claims in these types of proceedings. But when considering alternative proceedings to present different claims, a patent owner must also be mindful of the estoppel that takes effect upon judgment in a post-grant trial.30 Specifically, a patent owner cannot obtain a claim in any other proceeding before the Patent Office that is not patentably distinct from a claim that is finally refused or cancelled in a post-grant trial.31 Id. In other words, a patent owner will not have an opportunity to secure claims of the same scope as claims it lost in a post-grant trial. It can be seen that in some cases the patent owner may have difficulty in persuading the Patent Office that new claims are in fact distinguishable from claims lost in a post-grant trial, as in a case where the Patent Office finds that the new claims would have been obvious in view of the lost claims.
In sum, persuading the PTAB to grant a motion to amend will be difficult given the procedural and substantive requirements for the motion. But cases do suggest how a successful motion to amend needs to be framed. In any event, the strategic considerations regarding whether to file a motion to amend, and the possible alternative procedures for pursuing new claims, must be carefully considered.
- Id. at p. 16.
- Id. at p. 16. The PTAB did not grant the Patent Owner’s motion with respect to a second set of substitute claims directed to a method of using the prior art compound. Id. at 16-18.
- IPR2012-00027, Decision Motion to Amend Claims (Paper 26), p. 6.
30 37 C.F.R. § 42.73(d)(3).