APJs Advise Patentees on Amending Claims

Scott Daniels | January 8, 2014

While the APJs are strictly applying the inter partes review rules, they are also proactively advising parties on what is required to comply with those rules.  For instance, in a conference call last week in Corning Gilbert v. PPC Broadband (IPR2013-00347), the APJs sua sponte addressed the requirements for a patent owner to amend its claims.

In particular, a proposed amendment is not authorized until the patent owner has shown that the substitute claims are patentable over the prior art.

A motion to amend claims is insufficient if it simply explains why the proposed substitute claims are patentable over the prior art references relied upon in the review. Thus, the patent owner must do more than simply state that none of the prior art references of record discloses the combination claimed, or that no such specific combination is known to the movant.  The patent owner must also do more than state that the prior art of record would not have rendered the subject matter of the substitute claims obvious.

To address the issue of nonobviousness in an effective manner, the patent owner must discuss “the level of ordinary skill in the art, apart from the disclosure of any specific reference in the record.” The patent owner must “explain the basic knowledge and skillset already possessed by one with ordinary skill in the art, especially with respect to the particular feature or features the patent owner has added to the original patent claims.’  The APJs suggested, as an example, that the patent owner “identify in what contexts the added feature, or something very close to it, was known already, albeit not in the specific combination recited in the claims at issue.”

The APJs concluded by citing two orders concerning amendment of claims, Paper 26 in IPR2012-00027 and Paper 33 in IPR2013-00136.


Reference: 1. IPR2013-00347 – Conduct of Proceeding Order – Paper 20

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