Instructions from the APJs on Amending Claims in Inter Partes Review

Scott Daniels | June 16, 2013

Last week in a Decision in Idle Free Systems v. Bergstrom, IPR 2012-00027, the APJs continued their effort to instruct practitioners on acceptable procedures in inter partes review proceedings, in this case the proper steps for amending claims.  The specific outcome of the Decision – in essence to allow the patentee a second chance to amend its claims – is of little general interest.  What is of interest is the APJ’s statement of their expectations of patent owners in future cases.

The APJs began with the relevant provision of the AIA:

(d) Amendment of the Patent. –

(1) IN GENERAL. – During an inter partes review instituted under this chapter, the patent owner may file 1 motion to amend the patent in 1 or more of the following ways:

(A) Cancel any challenged patent claim.

(B) For each challenged claim, propose a reasonable number of substitute claims.

* * * *

(3) SCOPE OF CLAIMS. – An amendment under this subsection may not enlarge the scope of the claims of the patent or introduce new matter.

(35 U.S.C. § 316(d); emphasis added in Decision).

The APJs then turned to the Rules, specifically to Subsection (a)(3) of 37 C.F.R. § 42.121 which states that a motion to amend may cancel a challenged claim or propose a reasonable number of substitute claims.  They then quoted the portion of the Rule that provides: “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” (emphasis added in Decision).  Finally, they referred to subsection (a)(2) of 37 C.F.R. § 42.121 which states certain reasons for denying a motion to amend:

(2) Scope. 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 seeks to enlarge the scope of the claims of the patent or introduce new subject matter.

From these statutory and regulatory provisions, the APJs derive a general view that “inter partes review is a focused proceeding, unlike ex parte patent prosecution or patent reexamination” and that the patent owner must be equally focused in its claim amendments.

Accordingly, “in the absence of special circumstance, a challenged claim can be replaced by only one claim, and a motion to amend should, for each proposed substitute claim, specifically identify the challenged claim which it is intended to replace” (emphasis added).  Thus, the APJs will evaluate a proposed claim amendment “on a claim-by-claim basis, and that evaluation also is premised on the patent owner’s having identified, for each proposed substitute claim, the challenged claim which it is intended to replace. Specifically, with regard to 37 C.F.R. § 42.121(a)(2)(i), a proposed substitute claim is not responsive to an alleged ground of unpatentability of a challenged claim if it does not either include or narrow each feature of the challenged claim being replaced” (emphasis added).

An attempt to amend a claim “must be discussed with the Board prior to filing … the motion to amend. A patent owner is required to confer with the Board prior to filing a motion to amend claims. 37 C.F.R. § 42.121(a).”

In original prosecution or ex parte reexamination, a patent owner has the option of amending its claims (though heeding the prohibitions against new matter and improper broadening) to change the basic direction of those claims.  Not so in inter partes review:

A desire to obtain a new set of claims having a hierarchy of different scope typically would not constitute a sufficient special circumstance. An inter partes review is more adjudicatory than examinational, in nature. See Abbott Labs v. Cordis Corp., 710 F.3d 1318, 1326 (Fed. Cir. 2013). If a patent owner desires a complete remodeling of its claim structure according to a different strategy, it may do so in another type of proceeding before the Office.

The APJs then described the burden on the patent owner to show that new or amended claims are patentably distinguishable over the prior art.  This burden is described with respect to three sets of circumstances.  For each proposed substitute claim, the patent owner is required:

(1) in all circumstances, to make a showing of patentable distinction over the prior art;

(2) in certain circumstances, to make a showing of patentable distinction over all other proposed substitute claims for the same challenged claim; and

(3) in certain circumstances, to make a showing of patentable distinction over a substitute claim for another challenged claim.

Thus, in all circumstances, the patent owner

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.

The APJs explained that the showing of patentable distinction may be based on declaration testimony of a technical expert about the significance and utility of the feature or features added by the proposed substitute claim.  This showing should be “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 patent owner is also responsible for showing written description support in the original patent specification.

In certain circumstances, where the patent owner wishes to add “more than one substitute claim for any one challenged claim, the patent owner may additionally label each one after the first as a proposed new claim, to signal its special status, but also identify the challenged claim which it is intended to replace.”  A patent owner’s wish to substitute more than one claim for each challenged claim is a special circumstance requiring a special justification.  Specifically, “the patent owner needs to show patentable distinction of the additional substitute claim over all other substitute claims for the same challenged claim.”

In other certain circumstances,

where the substitute claim is presented as patentable over prior art on the same basis that another substitute claim on which it depends is patentable over prior art, the patent owner should provide meaningful reasons for making the additional changes effected by that dependent claim.

Recognizing the complexity of this statement, the APJs gave an example:

where independent claim 1 and dependent claims 2 and 3 are challenged, and claims 2 and 3 each depend on claim 1, a patent owner may propose three substitute claims 4-6 and indicate that claim 4 replaces claim 1, claim 5 replaces claim 2, and claim 6 replaces claim 3, where claims 5 and 6 each read the same as claims 2 and 3, respectively, except for the difference in claim dependency. Claims 5 and 6 will be patentable if claim 4 is shown to be patentable.

In the involved situation where the patent owner also wants to add further features into proposed substitute claims 5 and 6,

the patent owner should provide meaningful reasons to establish a special circumstance for adding those features. Without any explanation, at least facially the insertion of those additional features would not be responsive to an alleged ground of unpatentability. Showing a patentable distinction between each of proposed substitute claims 5 and 6, and proposed substitute claim 4, would be one such special circumstance.

The APJs then cautioned that the addition of claim features for no meaningful reason contradicts the patent owner’s burden of proposing a reasonable number of substitute claims, and is not responsive to an alleged ground of unpatentability and will therefore be denied entry by the Board. See 37 C.F.R. §§ 42.121(a)(2) and (a)(3).

Clearly, it will be a challenge for patent owners to meet each of these requirements for amending their claims.  One small piece of advice for practitioners might be to cite the relevant portions of the Idle Free Systems Decision to emphasize one’s desire to comply with the requirements stated therein.

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