In International Flavors & Fragrances Inc. v. United States, Case 2013-00124 (Paper No. 12) the Board granted the first motion to amend by adding new substitute claims in an inter partes review.  The Patent Owner only filed a Motion to Amend which was unopposed by the Petitioner. 

As this is one of the first motions where new claims have been added in an inter partes review, it is noteworthy to see how the Patent Owner satisfied the conditions required to add or substitute new claims.  First, the Patent Owner only added features to the substitute claims and did not remove any limitations, thus satisfying the rule that the claims may not enlarge the scope of the original claims.  See 35 U.S.C. 316(d)(3) and 37 C.F.R. 42.121(a)(2)(ii).  Additionally, the Patent Owner identified support for the subject matter in “as filed version” of the application.  In order to comply with the 15 page limit for motion to amend, a brief one paragraph description of the written description support was presented, with specification citations shown as an exhibit to the Motion.

The biggest challenge in a motion to amend is demonstrating patentability of the proposed claims over the prior art in general.  The Board reiterated its decision in Idle Free Sys., Inc. v. Bergstrom, Inc. IPR2012-00027 (Paper No. 66) that patent owner should discuss as well as present evidence as to the level of ordinary skill in the art and what was known regarding the features being relied upon to demonstrate patentability of the proposed claims.  In International Flavor, the Patent Owner satisfied this requirement by demonstrating the patentability of the “apparent” closest art discussed in the Petition as well as demonstrating “the level of ordinary skill in the art and providing evidence regarding what would have been understood by the ordinary artisan as to those features being relied upon to demonstrate patentability of the proposed claims.”  See pg. 12 of Paper No. 12.

Of particular interest, the Patent Owner characterized the Behan reference used in the petition as the “apparent” closed prior art.  Noting this characterization appeared conclusory; the PTAB relied on additional evidence to establish general patentability.  In particular, the Patent Owner cited to several references showing that “small changes in structure can result in a compound with very different properties.”  Further, this position was bolstered by declaration testimony that a person of ordinary skill would not have expected that minor changes to the prior art would have resulted in the claimed features.  Again, as these statements were unopposed, the Patent Owner was successful in showing by preponderance of the evidence that certain of its claims were patentable over the prior art.