IPR Motions to Amend – Basic Rules & Guidelines

By: Tammy Dunn

A few short years ago, the AIA created inter partes review (IPR) proceedings.  Since their creation, IPRs have become an ever-popular way in which almost anyone can challenge the validity of a patent on certain grounds on the basis of printed publications.  Unlike district court litigation, where judges and juries decide questions of patent invalidity, in IPRs technically trained administrative patent judges in the United States Patent Office’s Patent Trial and Appeal Board (the “PTAB” or “Board”) decide whether challenged patent claims are unpatentable.  For certain validity questions, IPRs are supposed to present a faster, more economical, and more accurate alternative to district court litigation.

IPRs also provide a way for patent owners to amend challenged claims during IPR trial, at least theoretically, through a motion to amend.  Initially, the possibility of claim amendment was thought to provide a benefit for patent owners in these proceedings.  The PTAB did not grant the first motion to amend, however, until a year and a half after the creation of IPRs; and, in that case the patent owner was the U.S. government and the motion was not opposed by the patent challenger.  See International Flavors & Fragrances Inc. v. U.S. Department of Agriculture, Case IPR2013-00124 (PTAB May 20, 2014) (Paper 12)

Relatively early in the existence of IPRs, perhaps due to a perception that the PTAB’s requirements were too strict, or that the odds were too highly stacked against them, many patent owners ceased even trying to file motions to amend.  For example, 92 motions to amend were filed in fiscal year (FY) 2014, 59 were filed in FY 2015, and only 26 in FY 2016.  Patent Trial and Appeal Board Motion to Amend Study, (USPTO Apr. 30, 2016).

Though a few more motions have been granted over the years, the statistics are startlingly low.  According to a study performed by the USPTO with data current as of April 30, 2016, out of 118 motions to amend with substitute claims that were decided since the creation of IPRs, only 2% were granted entirely, 4% were granted in part, and 95% were completely denied.  Id.

Still, in the right case, a motion to amend may be appropriate.  This article highlights the key requirements for a successful motion to amend claims in an IPR, informed by guidelines the PTAB has announced over the years.

  1. One Motion to Amend Allowed; One Substitute Claim Per Challenged Claim

A patent owner in an IPR is allowed to file one (1) motion to amend, limited to 25 pages in length, per proceeding.  35 U.S.C. § 316(d)(1); 37 C.F.R. § 42.24.  A motion to amend may cancel any challenged claim and/or propose a “reasonable number of substitute claims” for each challenged claim.  35 U.S.C. § 316(d)(1)(A) and (B).  Because IPRs are supposed to be focused, just, and speedy, the PTAB has interpreted the phrase “reasonable number of substitute claims” to mean a patent owner is allowed one substitute claim per challenged claim, unless the patent owner can demonstrate a “special” need or circumstance.  Idle Free Systems, Inc. v. Bergstrom, Inc., Case IPR2012-00027 (PTAB June 11, 2013) (Paper 26, cited here as “Idle Free”), citing 37 C.F.R. § 42.121(a)(3) (The presumption is that only one substitute claim would be needed to replace each challenged claim, and it may be rebutted by a demonstration of need.”).  For this same reason, patent owners must also make very clear in their motions to amend which proposed substitute claim is being proposed for which challenged claim.  Idle Free, at 5.  As a general rule, motions to amend should make it very easy for the Board to substitute claims that are proposed by the patent owner.

  1. Requirements for Successful Motions to Amend

Motions to amend also must meet the following requirements to be successful.

  1. Clearly Identify Written Description Support

First, the patent owner must clearly and specifically show that each proposed substitute claim has written description support in the original disclosure of the application for the patent being challenged in the IPR.  37 C.F.R. § 42.121(b)(1); Nichia Corp. v. Emcore Corp., IPR2012-00005 (PTAB) (Papers 27 and 68).  In situations where there was no change to the original disclosure when the patent issued, there may not be too much of an issue. Where there were changes made, patent owners need to make sure that any proposed amended claims are fully supported by the original disclosure and not just the issued patent.  Note that provisional applications, while relevant for purposes of claiming priority, are not relevant for written description support for proposed substitute claims.  Nichia Corp., at 3-4, citing Reiffin v. Microsoft Corp., 214 F.3d 1342, 1345 (Fed. Cir. 2000).  Additionally, patent owners should explain how the written disclosures support their proposed substitute claims, particularly where the original disclosure does not include a verbatim recitation of proposed claim language.  Nichia Corp., at 4.

  1. Respond to Each Alleged Ground of Unpatentability

Second, proposed substitute claims must respond to each alleged ground of unpatentability involved in the IPR trial.  37 C.F.R. § 42.121(a)(2)(i).  The Board has explained that to be responsive to an alleged ground of unpatentability, a proposed substitute claim must either include or narrow each feature of the challenged claim being replaced, and must only narrow the scope of the challenged claim it replaces.  Idle Free at 5.  Patent owners may not seek to broaden a challenged claim in any respect.  Id.

  1. Show Patentable Distinction Over Prior Art

Third, a patent owner filing a motion to amend must make a showing of “patentable distinction” over the prior art.  The PTAB has explained patent owners should “identify specifically the feature or features added to each substitute claim, as compared to the challenged claim it replaces, and come forward with technical facts and reasoning about those feature(s), including construction of new claim terms, sufficient to persuade the Board that the proposed substitute claim is patentable over the prior art of record, and over prior art not of record but known to the patent owner.”  Idle Free, at 6-7.

A question that has arisen over the years is what exactly the Board meant when it said in Idle Free that patent owners must demonstrate patentability over “prior art of record and also prior art known to the patent owner” means.  Thankfully, the Board answered this question in its precedential decision in Master Image 3D, Inc. et al. v. RealD Inc., Case IPR2015-00040 (PTAB July 15, 2015).

In Master Image the Board announced that “prior art of record” should be understood as referring to (a) any material art in the prosecution history of the patent; (b) any material art of record in the current proceeding, including art asserted in grounds on which the Board did not institute review; and (c) any material art of record in any other proceeding before the Office involving the patent.  Master Image, at 2.   Meanwhile, “prior art known to the patent owner” should be understood as no more than the material prior art that Patent Owner makes of record in the current proceeding pursuant to its duty of candor and good faith to the Office under 37 C.F.R. § 42.11, in light of a motion to amend.  Id. at 3.

Prior to the Federal Circuit Decision in Aqua Products, Inc. v. Matal, the patent owner always had the ultimate burden of persuading the PTAB that proposed substitute claims are patentably distinct over the prior art of record and prior art known to the patent owner.  Master Image, at 4.  In Aqua Products, Inc. v. Matal, the Federal Circuit Court of Appeals sitting en banc issued a narrow ruling saying that the burden of persuasion must remain at all times on the petitioner, including with respect to demonstration of unpatentability of amended claims.  872 F.3d 1290 (Fed. Cir. 2017).  It is too early to tell what practical effect the Aqua Products decision will have on motion to amend practice, but we can expect that many of the same expectations from the Board will remain, regardless of the burden.  For example, historically, the Board has expected patent owners to make specific showings of patentability—it will not suffice to rely on merely conclusory statements by the attorney drafting the motion to amend.  Idle Free, at 6-7.  Patent owners seeking to amend claims may, therefore, rely on declaration testimony from technical experts, if available.  Id.  A patent owner may not, however, merely point to an expert declaration to make its case in a motion to amend.  A motion to amend must fully explain the reasons why proposed substitute claims should be allowed, including the evidence relied upon.  As discussed in ZTE Corp. v. ContentGuard Holdings, Inc., IPR2013-00136 (PTAB) (Papers 32), “Even evidence has to be explained, not to mention that it would be improper for any argument to be developed and presented, not in the motion itself, but in the declaration of an expert.  Having in the motion the substantive equivalent of merely a pointer, conclusion, or a citation, without the arguments and the explanation of the evidence, circumvents the applicable page-limit.”  ZTE Paper 32 at 2-3.  None of these expectations are expected to change because of the Aqua Products decision.

The Board has also explained that in showing patentable distinction over the prior art, patent owners should not only address references of record and references cited during foreign prosecution, they should also address the general level of ordinary skill in the art outside of those references, with respect to features the patent owner proposes to add to the claims to render the claimed subject matter, as a whole, patentably distinct from the prior art.  ZTE Paper 32 at 3.  If, for example, an added feature was not known to have been in combination with the rest of the elements in a claim, it would be important to know if the feature was known in some other context.  Id.  It would also be important to know why one with ordinary skill would not have known to apply that feature, from another context, for use with the rest of the claim elements.  Id.  Such explanation could also be important because it may be that the cited prior art is not the closest prior art with respect to the element added to support patentability of the claimed invention as a whole.  Id. 

Finally, it is important to remember that IPRs are not patent examination or reexamination proceedings.  Proposed substitute claims in an IPR are not entered automatically and then examined by an examiner, as they would be during prosecution or a reexamination.  In an IPR, if (and only if) the Board grants a patent owner’s motion to amend, the substitute claim will be added directly to the patent without examination.  Therefore, proposed amended claims are entered only upon a showing by the patent owner that the amended claims are patentable.  Axon Enterprise, inc. v. Digital Ally, Inc., Case IPR 2017-00375, Conduct of the Proceeding at 2 (PTAB Sept. 6, 2017) (Paper 20).  Thus, a patent owner seeking to amend claims in an IPR must demonstrate patentability first and foremost and, as discussed above, very specifically.

For more information about IPR practice, please contact Tammy Dunn at dunn@oshaliang.com.