How the Patent Owner Did It

It has finally happened. The United States Patent & Trademark Office permitted a patent owner to substitute claims during an inter partes review (IPR) in a final decision dated May 20, 2014. Below we discuss what led to the PTAB’s decision and draw lessons for other patent owners involved in IPRs.

Applicable Rules

A patent owner moving to substitute claims in an IPR bears the burden of proof. 37 C.F.R. § 42.20(c). The patent owner must show that a preponderance of evidence supports patentability of any substitute claims. 37 C.F.R. § 42.1(d). In addition, substitute claims cannot enlarge the scope of (be broader than) the original patent claims. 35 U.S.C. § 316(d) (3); 37 C.F.R. § 42.121(a)(2)(ii). Nor can the patent owner add new claims without cancelling at least an equal number of challenged claims (no more than one-for-one substitutions of challenged claims). 37 C.F.R. § 42.121(a)(3). Finally, the patent owner must identify written description support for each substitute claim. 37 C.F.R. § 42.121(b)(1).

IPR Proceeding Before Final Decision

IPR2013–00124 concerns a patent owned by the United States that describes how to use a particular chemical (isolongifolenone analogs) to repel arthropods (insects, spiders, etc.). The IPR petitioner challenged claims 1, 4, 5,  7, 8, and 14–26. A prior art PCT publication to Behan anticipates these claims or at least makes them obvious when combined with additional references, according to the petitioner.

Behan lists various perfume ingredients, including isolongifolanone, which may be used as insect repellents.

The PTAB granted the petition and instituted the IPR on June 27, 2013. The PTAB concluded the petitioner was reasonably likely to prevail as to at least one challenged claim.

On September 30, 2013, the patent owner filed a motion to amend. This was a motion to substitute new claims 27–45 and to cancel claims 1–26. New proposed independent claim 27 was an amalgam of originally issued claims 1 and 8.

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Behan was the closest known prior art, according to the motion to amend. Claim 27 was different however, because it required five modified isolongifolanone compounds not disclosed by Behan. Nor did Behan disclose or suggest modifying the structure of its disclosed isolongifolanone to achieve an insect repellant.

The patent owner also submitted evidence with the motion to amend. A declaration from a Dr. Zhang showed a particular isolongifolanone precursor did not work as an insect repellant (specifically, it did not have a statistically significant repellant effect on female ticks). Finally, the patent owner provided several publications showing that minor structural changes were known to affect activity of other insect repellants.

Final Decision

The PTAB’s Final Decision largely tracked the patent owner’s arguments. After confirming that the proposed substitute claims did not broaden the scope of the challenged claims and that the written description supported the substitute claims, the PTAB turned to patentability. The decision echoed an earlier PTAB decision in Idle Free Sys., Inc. v. Bergstrom, Inc., IPR2012–00027 (Jan. 7, 2014 (paper 66)) and stated that a motion to amend must demonstrate not just patentability over the references cited by the petitioner, but also must show patentability over the prior art   in general. The PTAB instructed, “the patent owner should discuss, as well as present evidence, if appropriate, as to the level of ordinary skill in the art, and what was known regarding the features being relied upon to demonstrate patentability….” See Final Decision, p. 11.

Behan does not anticipate proposed substitute claim 27. Behan does not disclose the particular modified isolongifolanones now required by proposed substitute claim 27. The articles submitted by the patent owner show that small structural changes could result in different properties in insect repellants. This shows the level of skill in the art and demonstrates it was not obvious to change the isolongifolanone of Behan to the five particular compounded required by claim 27. A reason to modify Behan’s isolongifolanone was lacking.

Take Home Lessons for Patent Owners in IPR

The burden to establish patentability for substitute claims in IPR proceedings has been fatal to all but one patent owner motion to amend so far. At least 25 such motions in a row were denied by the PTAB before a patent owner finally succeeded in substituting any claims. The PTAB has signaled clearly and repeatedly that it expects patent owners to establish patentability over the prior art cited by the petitioner as well as the prior art generally.

In IPR2013–00124, the patent owner succeeded by addressing the art as a whole. The patent owner supplied a declaration showing that small changes to a particular isolongifolanone compound affected its insect repellant activity. This established the significance of the seemingly small structural differences between the isolongifolanone disclosed by the Behan prior art and the five modified isolongifolanone compounds required by proposed substitute claim 27.

The patent owner did not stop there, however. The owner also supplied several publications demonstrating the same point but for other known insect repellants. These publications helped demonstrate patentability over the prior art as a whole. From the perspective of one with ordinary skill in the art, the new limitations of proposed substitute claim 27 were non-obvious.

Patent owners should follow this blueprint when seeking to substitute claims in an IPR proceeding.