Amendment Hurdles: Clearing Hurdles for Substitute Independent Claim Does Not Necessarily Lead to Clearing Hurdles for Substitute Dependent Claim

Authored by Michelle Carniaux, Michael E. Sander, and Eric Paul Greenwald

In an earlier post, we discussed the Patent Trial and Appeal Board’s (“the Board”) Idle Free decision, which explained the high hurdle for a successful patentability argument in a Motion to Amend Claims. See IPR2012-00027, No. 26, Order (P.T.A.B. June 11, 2013).

Since that decision, no contested motion for claim substitution had been granted by the Board—until December 30th’s twin decisions in Riverbed Technology, Inc. v. Silver Peak Systems, Inc. See IPR2013-00402, No. 35, Order (P.T.A.B. December 30, 2014) and IPR2013-00403, No. 33, Order (P.T.A.B. December 30, 2014).

As the moving party in a motion to amend claims, the patent owner bears the burden of proof to establish patentability of its amended/substitute claims. See 37 C.F.R. § 42.20(c). Thus, the patent owner is required to submit a thorough explanation of, among other things, how its proposed claims are patentably distinct not only from the prior art on record, but also all prior art known to the patent owner. See IPR2012-00027, No. 26, at 7.

IPRs 2013-00402 and 2013-00403 involve patents relating to network memory systems. In both proceedings, the petitioner raised grounds of unpatentability based on six prior art references. IPR2013-00402, No.35, at 9-10; IPR2013-00403, No. 33, at 9-10. In response, Silver Peak Systems filed a motion in each case to cancel all claims in the respective patent and substitute six claims in their place. See IPR2013-00402, No.25, at 1-6; IPR2013-00403, No. 23, at 1-6. The patentability arguments in both of Silver Peak Systems’ 15-page motions focus on the “McCanne” references cited by the petitioner—represented as the closest prior art known to the patent owner—but also touch upon “prior art token-based systems” and data hash filtering in general. IPR2013-00402, No. 25, at 9-15.

In each of the cases, the Board found that, for two of the proposed substitute claims, the patent owner met its high burden of showing patentability. See IPR2013-00402, No.35, at 11; IPR 2013-00403, No. 33, at 11. The Board found Silver Peak Systems’ explanation as to how the new claims differed from pre-existing memory systems, and the six cited references specifically, was persuasive and supported by the evidence. See IPR2013-00402, No.35, at 18-19. “Patent Owner addresses the prior art of which it is aware generally . . . and explains why it believes proposed substitute claims 13 and 15 are patentable over . . . the prior art . . ..” Id. at 24-25. The Board further held that patent owners need not provide an expert declaration in support of its patentability arguments in a motion to amend. Id. at 25.

Of the four remaining proposed substitute claims in IPR2013-00402, two were denied for lacking patent-eligible subject matter under 35 U.S.C. § 101. Id. at 35. Interestingly, the Board denied the two other proposed substitute claims because the patent owner had not shown that the claims were “patentably distinct” over the proposed substitute parent claims which the Board found to be patentable. Id. at 31. The Board explained that a “patent owner may propose a reasonable number of substitute claims for each challenged claim. 35 U.S.C. § 316(d)(1)(B). Absent special circumstances, it is presumed that only one substitute claim is needed to replace each challenged claim. 37 C.F.R. § 42.121(a)(3).” Id. at 27. Additionally, amendments must be responsive to a ground of unpatentability in the trial. Id. Citing its Idle Free decision, the Board stated that to demonstrate a patentable distinction over proposed parent substitute claims, the Board must assume the parent claims are prior art – even though the Board found the parent claims to be patentable:

Patent Owner has not shown a patentable distinction between proposed substitute claims . . . and their parent proposed substitute claims . . .. The [further] limitation [in the dependent claims], therefore, is not responsive to a ground of unpatentability involved in the trial. For the same reasons, . . . Patent Owner has not demonstrated a sufficient need for exceeding the presumption that only one substitute claim is needed to replace a challenged claim.

Id. at 31.

The four remaining proposed claim substitutions of IPR2013-00403 were similarly denied; two for lacking patentable distinction over their allowed parent substitute claims and two for means-plus-function limitation description deficiencies. No. 33, at 31-32, 35-37.

The twin motions to amend, and the decisions partially granting them, provide valuable hints for patent owners that are considering filing a motion to amend. Even if one is successful in clearing the hurdles for a proposed independent claim, for any proposed dependent claim, patent owners must clear the additional hurdle of showing how it is patentably distinct from the successful independent claim.