In breaking news for the intellectual property world, the Patent Trial and Appeal Board (“PTAB”) recently granted its first motion to amend claims in an inter partes review (“IPR”).  Granting such a motion is significant because it is the first time the PTAB has amended claims in an IPR.  As I addressed in an earlier post, the ability to save patents from an IPR is significant given the high likelihood that the PTAB will cancel claims in an IPR.  Up until now some practitioners thought that it would be near-impossible to successfully amend claims during an IPR.  This is because the administrative patent judges, according to the PTAB’s rules, already thought there was a reasonable likelihood the claims were unpatentable when the judges instituted the IPR.  Additionally, patent owners only have 15 pages for their motion to amend compared to the 60 pages the petitioners have to make their case-in-chief.  However, through proper strategy and argument, the United States Government was able to successfully amend their patent.  To better understand this decision we must look first to the history and posture of the case itself.  With an understanding of the case we can then look to see how the patent owner was able successfully amend its claims.  These strategies may allow patent owners to “side-step” an IPR and protect much of their patent’s scope.

The case stemmed from International Flavors challenge of the United States Government’s patent U.S. Patent 7,579,016 (“the ‘016 patent”).  International Flavors v. The United States, IPR2013-00124.  The patent covered a method of repelling arthropods, such as mosquitoes, using (–)isolongifolenone and some of its analogs.  The United States of America was represented by the Secretary of Agriculture in this case.  International Flavors challenged numerous claims on the grounds of both anticipation and obviousness.  The government did not file a preliminary response nor did it file a patent owner’s response after the PTAB instituted a trial.  Instead the government only filed a motion to amend using only 10 of the 15 pages it was allotted.  In its motion the government cancelled claims all of its claims and proposed 2 new independent claims and 17 additional claims depending from the first independent claim.  The motion was the final filing in this IPR.  In its final decision the PTAB granted all claims but the second independent claim.  This decision gives practitioners the opportunity to see how the PTAB analyzed the motion to amend.

The PTAB’s decision focused on three parts.  First, the judges set up a legal framework that incorporated the PTAB’s emerging jurisprudence to establish the patentability requirements in a motion to amend.  The PTAB then turned to the weaknesses that the patent owner found in the prior art.  Last, the PTAB addressed the patent owner’s evidentiary support for the patentability of its claims.  This post will now briefly address each of these elements.

The judges established their own framework for patentability that adopted case law not cited in the government’s motion to amend.  IPRs present the first time patent owners can amend claims without a patent prosecution, and it is important to use the PTAB’s requirements for patentability as opposed to arguments traditionally made in other venues, including those made during prosecution.  The judges applied the reasoning in Idle Free Sys., Inc. v. Bergstrom, Inc., IPR2012-00027, slip op. at 33 (PTAB January 7, 2014 (Paper 66)), as to what that patentability entails.  “Specifically, in the case of a motion to amend, the patent owner bears the burden of proof to demonstrate patentability of the proposed claims over the prior art in general, and thus entitlement to the proposed claims.” International Flavors, IPR2013-00124, slip op. at 11 (PTAB May 20, 2014 (Paper12)).  The PTAB does not assume that the patent owner is “aware of every item of prior art presumed to be known to a hypothetical person of ordinary skill in the art.” Idle Free Sys., slip op. at 11. Instead, patent owners “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.”  Id.  The PTAB then went on to apply the obviousness standards from KSR as well as several other cases that specifically dealt with the obviousness claims based on the similarity of molecular structures.  The importance of this framework cannot be overstated.

The PTAB created its own framework for analysis in this case that was independent of either parties’ briefing.  It should be noted that the PTAB adopted the Idle Free framework even though the decision came out after the government filed its motion to amend, and with no additional papers citing the Idle Free.  Additionally, the PTAB primarily cited cases in its patentability analysis that were absent from both parties’ briefings.  These cases dealt with the particular obviousness requirements for an invention in that field, in this case the structural similarity of chemicals compounds.  A proper motion to amend should focus on the specific obviousness requirements in the field of the invention, and why the claims are patentable over the prior art in light of these requirements.  This will allow the PTAB to properly-assess a movant’s arguments regarding the prior art.

While the PTAB in International Flavors adopted its own legal framework, it did focus on the patent owner’s arguments to neuter the prior art.  The patent owner identified the most-related piece of prior art and neutered it.  The patent owner pointed out key deficiencies in the central piece of prior art and why the prior art would not lead a person of ordinary skill in the art to create the inventions covered by the amended claims.  The deficiencies included a lack of experimental data, experiments, or methods using the compound covered in the amended claims.  Nor did the prior art disclose or suggest modifying the chemical’s structure would lead to a compound with similar properties.  Mot. 8.  In the PTAB’s decision the judges specifically focused on the prior art’s deficiencies pointed out in the motion to amend.  The patent owner supported its arguments that the prior art was deficient with evidence in the form of expert declarations and scientific journals.

The government provided both expert declarations and publications to demonstrate the level of ordinary skill in the art as well as the patentability of the proposed claims.  Specifically, several of the references evidenced that minor changes could create compounds with substantially different properties.  Therefore, the minor changes in the patent owner’s claims would not be expected to also repel insects.  These arguments were further supported with several examples to show the unpredictability of the field.  Ultimately, the arguments persuaded the PTAB.

The PTAB granted all the amended claims because the judges found by a preponderance of the evidence that the claims were patentable over the prior art, which the patent owner poked holes in.  The sole unpatentable claim, which sought to add the benefit of repelling ticks and mites, was not granted because “merely discovering and claiming a new benefit of an old process cannot render the process again patentable.” In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990).  With the majority of claims granted, the decision gives practitioners an example of what the judges consider when they decide to grant a motion to amend.  Practitioners must persuade the judges both with substantive arguments and sound advocacy tactics.

It is not surprising that the first time the PTAB granted a motion to amend was in a case where the patent owner did not file a patent owner’s response, but only a motion to amend.  Filing a response to the IPR and a motion to amend could imply to the patent judges that the patent owner is trying to have their cake and eat it to.  This case is more evidence that IPRs are not about making every logical argument, but about picking your best argument and sticking with it.  The judges do not have a great deal of time to make their decision, and flooding them with papers and multiple, contingent arguments do not make their decision any simpler.  Keeping your arguments simple and sticking with a single strategy is good advocacy.  A successful motion to amend allows patent owners to protect much of their patent’s coverage.  Patent owners should partner with attorneys who understand both the substance and strategy of IPRs in order to best-protect their intellectual property.