Patent Owners Have a High Burden to Amend Claims

Authored by Michelle Carniaux and Michael E. Sander

In a previous post, we discussed several requirements for a Patent Owner to succeed in a Motion to Amend Claims. Six months later, the Patent Trial Appeal Board (“the Board”) has ruled on two such motions, denying both, and has given some additional guidance to Patent Owners on how to draft a successful Motion to Amend.

In their first decision on a Motion to Amend, the Board denied the motion because the Board found that the Patent Owner did not demonstrate sufficient written description support for its proposed substitute claims. The Board also found that because the proposed substitute claims covered a structure that would not have been covered by the original patent claims, the proposed substitute claims impermissibly enlarged the scope of the original claims the substitute claims replaced.

In their second decision on a Motion to Amend (January 7, 2014), the Board also denied the motion. The Board noted that Patent Owner made a sufficient showing that the proposed substitute claims had written description support, and did not improperly broaden the scope of the original claims. The Board was also persuaded that there were differences between the subject matter of the proposed substitute claims and the prior art of record in the inter partes review.

However, even though Patent Owner differentiated the amended claims over the prior art cited in the inter partes review, the Board denied Patent Owner’s Motion to Amend because they failed to differentiate the amended claims over the prior art “in general.” The Board stated that:

[Patent Owner] Bergstrom bears the burden of proof in demonstrating patentability of the proposed substitute claims over the prior art in general . . ..

Bergstrom is not assumed to be aware of every item of prior art presumed to be known to a hypothetical person of ordinary skill in the art. Nevertheless, Bergstrom can, and is expected to, set forth what it does know about the level of ordinary skill in the art, and what was previously known, regarding each feature it relies and focuses on for establishing patentability of its proposed substitute claims.

See Decision at 33. The Board continued, holding that merely stating the “closest prior art,” without discussing the level of ordinary skill in the art and what was previously known, is insufficient. Instead, a Patent Owner should “rely on declaration testimony of a technical expert about the significance and usefulness of the feature(s) added by the proposed substitute claim, from the perspective of one with ordinary skill in the art, and also on the level of ordinary skill, in terms of ordinary creativity and the basic skill set.”

The Board appears to set a relatively high bar for Patent Owners to amend their claims, and they do so because the nature of an inter partes review proceeding is quite different than a normal patent examination, where there is a back and forth between examiner and patentee.