Motions to Amend and Substitute Claims in an Inter Partes Review

Authored by Michelle Carniaux and Michael E. Sander

After the Patent Trial and Appeal Board (“the Board”) institutes a trial for inter partes review, the patent owner has an opportunity to amend/substitute the challenged claims through a motion to amend. The Board recently issued a decision on a motion to amend that appears to be intended to provide guidance on how the Board will analyze such motions, and the general requirements of such motions. See IPR2012-00027, No. 26 (P.T.A.B. June 11, 2013).

Claim-by-Claim Analysis
According to the Board, absent special circumstances, a challenged claim can be replaced by only one claim. Id. at 5. A motion to amend should, for each proposed substitute claim, specifically identify the challenged claim it is intended to replace, since the Board will do its analysis of whether or not it will permit the proposed substitution on a claim-by-claim basis. Id. at 5.

In accordance with 37 C.F.R. § 1.121, a motion to amend may be denied where (i) the amendment does not respond to a ground of unpatentability involved in the trial, or (ii) the amendment would enlarge the scope of the claims of the patent or introduce new subject matter. The Board evaluates these conditions, and will find that a proposed claim is not responsive to a ground of unpatentability if it does not either include or narrow each feature of the challenged claim being replaced. Id. at 4.

Need to Show Patentable Distinction
For each proposed substitute claim, the patent owner must, in all circumstances, make a showing of patentable distinction over the prior art. Id. at 6-7. According to the Board, the patent owner should specifically identify the feature(s) added to each substitute claim, as compared to the challenged claim it replaces, and provide “technical facts” and a “construction of new claim terms” to persuade the Board that the claim terms are patentable over not only the prior art of record, but also prior art not of record but known to the patent owner. Id. at 7. “The burden is . . . on the patent owner to show patentable distinction” over the prior art and also to show “written description support in the original disclosure.” Id. at 7-8. The burden is not on the petitioner to show unpatentability. Id. at 7. In addition, the patent owner should make some representation “about the specific technical disclosure of the closest prior art known to the patent owner, and not just a conclusory remark that no prior art known to the patent owner renders [the substitute claims] obvious.” Id.

Clearly Stating the Contingency Substitution
Finally, the Board requires patent owners to clearly state the “contingency of substitution.” Id. at 10. For example, a patent owner may not simply state that if “claims 1-50 are found unpatentable, entry of substitute claims 51-100 is requested.” Id. at 10. If only a subset of the claims were found unpatentable, then the statement would be ambiguous. Accordingly, a patent owner must specify the contingency of substitution individually for each claim. Id.