Guidance from the Board on Claim Amendments in Inter Partes Review

Scott Daniels | June 4, 2013

In the earlier days of the new AIA post-issuance proceedings, the Patent Trial & Appeal has written a series of decisions, intended to explain to practitioners of the procedures to be followed in those proceedings.

Yesterday, in Nichia v. Emcore, IPR2012-00005 (Paper 27), the Board summarized what is required of a patent owner hoping to amend its claims.  The Petitioner Nichia had initiated a conference call with the Board and the Patent Owner Emcore to clarify whether the latter had complied with its duty to “confer with the Board” before filing its motion to amend its claims.

The Board determined that Emcore had complied with that duty, noting (1) that Emcore had filed notice indicating that it intended to file a motion to amend, and (2) that the Board had issued an order from an earlier conference call in which the patent owner was cautioned that it “must explain how the proposed substitute claims obviates the ground of unpatentability authorized in this trial and clearly identify where in the written description support can be found.”  In the present order, the Board also indicated that Emcore must avoid submitting “an unreasonable number of substitute claims … .”

The Board then expanded upon what is required for a patent owner to establish written description support for claim amendments and new claims:

  • “a motion to amend claims must clearly identify the written description support for the proposed substitute claims. In particular, 37 C.F.R. § 42.121(b)(1) requires the patent owner to set forth the support in the original disclosure of the patent for each proposed substitute claim.”
  • “the written description test is whether the original disclosure of the application relied upon reasonably conveys to a person of ordinary skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.”
  • “citations to the provisional application are relevant only for the benefit claim under 35 U.S.C. § 119(e), and not for the written description support for the proposed substitute claims.”
  • “merely indicating where each claim limitation individually described in the original disclosure may be insufficient to demonstrate support for the claimed subject matter as a whole.”
  • “the proposed substitute claims need not be described “in haec verba” in the original disclosure in order to satisfy the written description requirement. However, should the claim language does not appear in ipsis verbis in the original disclosure, a mere citation to the original disclosure without any explanation as to why a person of ordinary skill in the art would have recognized that the inventor possessed the claimed subject matter as a whole may be similarly inadequate.”

Clearly, the Board intends to enforce its procedural rules strictly, but it is also acting aggressively to ensure that practitioners are aware of those procedures.


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