International Flavors & Fragrances Inc. v. The United States  

In a move unprecedented in any inter partes review (IPR), the Patent Trial and Appeal Board (PTAB) allowed the patent owner—the U.S. Department of Agriculture (USDA)—to substitute 18 claims in an insect repellant spray patent.  International Flavors & Fragrances Inc. v. The United States, Case IPR2013-00124 (PTAB, May 20, 2014) (Green, APJ).

International Flavors & Fragrances petitioned for review of several claims of a patent owned by the USDA, which claims a method for repelling arthropods, such as ticks and mosquitoes, utilizing isolongifolanone analogs.  Rather than file a patent owner response, the USDA filed only a motion to amend seeking to substitute 19 claims of the challenged patent.

Under 37 C.F.R. § 42.121, a patent owner must meet three criteria to successfully substitute new or amended claims in an IPR: (i) the substitute claims may not enlarge the scope of the original patent claims; (ii) the motion must identify the support in the original disclosure for each element of claim that is added or amended; and (iii) the motion must demonstrate the patentability of the proposed claim(s) over the prior art in general.

The third requirement has proven to be the most burdensome for patent owners.  Simply distinguishing the proposed claims from the prior art references applied to the original patent claims is insufficient to demonstrate patentability over prior art.  Instead, the PTAB noted that a “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 of the proposed claims.”

Here, the patent owner provided the PTAB with several publications and an expert declaration to demonstrate the level of ordinary skill in the art.  In its decision, the PTAB noted that the patent owner not only provided declaratory statements about the level of ordinary skill in the art, but also provided ample evidence to establish “what would have been understood by the ordinary artisan as to those features being relied upon to demonstrate patentability of the proposed claim.”  In particular, the publications cited by the patent owner showed how minor structural changes in isolongifolanone compounds result in substantially different properties.  Further, the PTAB noted the absence of a “reasonable expectation that such modifications would result in a compound having the desired insect repellant activity.”  Indeed, minor chemical modifications could create a compound that attracted, rather than repelled, insects.  The IPR petitioner did not oppose the motion.

The PTAB concluded that the USDA had shown, by a preponderance of the evidence, that 18 of the 19 proposed substitute claims were patentable, and granted-in-part the motion to amend those claims.