The Board recently added an order in Corning Optical Communications RF, LLC v. PPC Broadband, Inc., IPR2014-00441, to its list of Representative Decisions on Motion to Amend on the Board’s web site.  The decision outlines in narrative form certain procedural requirements for motions to amend in post-issuance proceedings, such as inter partes reviews.

In the order, the Board reiterated that a motion to amend can either cancel claims or propose substitute claims. A request to substitute a claim is contingent on whether the Board holds the corresponding original claim unpatentable or the patent owner cancels it.  There is no such limitation for requests to cancel claims.  The proposed substitute claim must be “traceable” to an original claim it and it should not eliminate any feature or element of that original claim.  A patent owner should avoid proposing multiple substitute claims per original claim, absent a “special circumstance” articulated in the motion.  

The patent owner must prove it is entitled to the substitute claims by “show[ing] patentability, in general.”  Notably, the patent owner must show the claims are patentable over the relevant prior art of which the patent owner is aware, and not only the prior art in the proceeding.  To do this, the motion should “provide sufficient underlying facts regarding any feature added by the proposed substitute claim” and “should include a discussion of the ordinary skill in the art, with particular focus on the feature added to provide the basis of patentable distinction.”  In addition, the patent owner should propose a specific construction for any new term of which the meaning could be disputed.  It will not be sufficient for the patent owner to merely say the term is entitled to “its plain and ordinary meaning.”

The patent owner must further explain where each limitation of each proposed substitute claim is found in the originally filed specification of the patent and the originally filed specification of any parent applications in the patent’s priority chain.  The Board suggested a patent owner (1) file, as exhibits, a copy of each application in the priority chain as originally filed; (2) seek the petitioner’s stipulation that each application has identical substantive disclosure, and (3) “indicate in the motion to amend that all applications in the chain of priority applications have identical substantive disclosure (if true) and all are continuation applications rather than continuation-in-part applications of the application one earlier in the chain; and that the parties have stipulated to these facts (if true).”

This decision provides critical guidance for patent owners seeking to comply with the rigorous procedural requirements for motions to amend. 

Before Lee, Cocks, and Bonilla, Administrative Law Judges

Informative Opinion: Corning Optical Communications RF, LLC v. PPC Broadband, Inc., IPR2014-00441, Paper 19 (P.T.A.B. Oct. 30, 2014)