A recent decision by the Patent Trial and Appeal Board (“Board”) in adidas v. Nike, IPR2013-00067, suggests stringent requirements to establish patentability over other known prior art when amending claims in an inter partes review.  Paper No. 60 entered April 28, 2014.  The Patent Owner, Nike, filed a motion to amend to add substitute claims and was successful in persuading the Board that its substitute claims did not enlarge the scope of the original claims and defined the metes and bounds of the invention under 35 U.S.C. §112, second paragraph.  However, the motion was denied because the Patent Owner failed to demonstrate that the substitute claims are patentable over the “other known prior art.” 

In its motion to amend, Nike stated that the substitute claims are patentable over the prior art, including prior art identified by the Board and other prior art known to NIKE.  Paper No. 31, pg. 3, emphasis added.  The Board stated that the Patent Owner’s responses to prior art references identified by the Board fell short of establishing patentability of the claims and was not a “meaningful analysis” of the art.  Paper No. 60 at p. 34.  The Board concluded that the claims were unpatentable as rendered obvious by Nishida in view of additional teachings of Schuessler I and II patents.  However, the Schuessler I and II patents were not cited during the prosecution history of the challenged patent and not identified in the petition.  It appears that the first time these additional patents were referred to was in the Petitioner’s Opposition.  Paper No. 37, pp. 10.  Thus, it is unclear whether the Schuessler I and II patent was prior art “known” to the Patent Owner.

The Board’s decision clarifies that a discussion of “other known prior art” will not be satisfied by merely discussing the prior art in the petition or ones known to the patent owner per se, but rather also includes prior art relating to the basic knowledge and skill possessed by one of ordinary skill in the art.  This discussion must include some representation about a specific technical disclosure of the closest known prior art and distinctions over that prior art.  Thus, even assuming that the Patent Owner did not know about the Schuessler I and II patents, it was required to establish patentability of its proposed claims over art known to or possessed by a person of ordinary skill in the art.