Over the last year, the PTAB has issued a number of orders providing guidance on the procedures for amending claims in IPRs, PGRs, and CBMs. In its latest final written decision, Idle Free Systems, Inc. v. Bergstorm Inc., IPR2012-00027, Paper 77 (January 7, 2014), the Board discussed at length the burden placed on a patentee seeking to amend its challenged claims.

First, the Board distinguished post-grant proceedings from pre-grant examination and post-grant reexamination. Unlike those examination contexts, proposed amendments or substitute claims are not entered and then subjected to a thorough examination. Rather, during post-grant proceedings, the proposed amended or substitute claims are “added directly to the patent, without examination, if the patent owner’s motion to amend claims is granted.” To that end, the Board clarified that the burden is on the patentee to demonstrate that the amended or substitute claims are patentable over the prior art in general, not just the art of record.

While a patentee is not assumed to be aware of every item of prior art, the PTAB stated that a patentee “can, and is expected to set forth what it does know about the level of ordinary skill in the art, and what was previously known, regarding each feature it relies and focuses on for establishing patentability of its proposed substitute claims.” Where a patentee is unaware of the teachings of the newly added feature in the art, the patentee is expected to make such a statement to the Board. Otherwise, the Board requires that the patentee explain what was previously known and why it would not have been applicable to render the amended or substitute claims obvious to one with ordinary skill in the art.

These requirements place a heightened burden on patentees. It is not enough for a patentee merely to distinguish its proposed amended claims or substitute claims over the prior art of record. Instead, a motion to amend should include a discussion of the art that was known, a discussion of the level of ordinary skill in the art, and the reasons why the amended or substitute claims are patentable over the known art.