For the first time since the inception of the IPR process, the Patent Trial and Appeal Board has granted a patent owner’s motion to amend claims. The patent at issue relates to a method of using a chemical compound to repel insects. The Board instituted review of all the challenged claims and the patent owner filed a motion to amend. In analyzing the patent owner’s motion, the Board explained that proposed amendments to claims require a patentability showing by a preponderance of the evidence. According to the Board, a motion to amend must meet three requirements: 1) the proposed substitute claims must not broaden the scope of the original claims; 2) the patent owner must set forth the support in the original disclosure of the patent for each amended claim; and 3) the patent owner must demonstrate patentability of the proposed claims over the prior art in general, not just the prior art applied to the original patent. As to the third requirement, the Board further noted that a patent owner is not required to be aware of every item of prior art presumed to be known to a hypothetical person of ordinary skill in the art. Rather, the patent owner should explain and present evidence, when appropriate, as to the level of ordinary skill in the art, and what was known regarding the feature being relied upon to demonstrate patentability of the proposed claims. In this case, the patent owner provided several publications as well as an expert declaration to demonstrate the level of ordinary skill in the art and the unobviousness of the features being relied upon to demonstrate patentability. The Board concluded that such evidence was sufficient for the patent owner to prevail in this case and, therefore, granted the motion.

International Flavors & Fragrances, Inc. v. United States, IPR2013-00124 (PTAB May 20, 2014) [Green (opinion); Prats; Fitzpatrick]