Amending Patent Claims in Inter Partes Reviews

Scott Daniels and Cindy Chen | February 24, 2014

The number of “Final Written Decisions” in inter partes review proceedings is still too small to talk about a “kill rate.”  Nevertheless, the initial results appear to favor those challenging patent validity.  A notable example is the APJs’ decision from earlier this month in Nichia v. Emcore (IPR2012-0005), where the petitioner appears to have won on all issues.  The case is noteworthy for practitioners, however, in its lengthy instruction to patent owners on how to amend claims in inter partes review.


The patentee Emcore moved to amend 10 of the 17 claims under review.  The APJs denied the motion.  A series of guiding principles for patentees to consider may be gleaned from the APJs’ decision. 

  • Inter partes review is “more adjudicatory than examinational.”
  • The patentee has the burden of showing that it is entitled to amend its claims.
  • For each challenged claim, a patent owner may propose a reasonable number of substitute claims, i.e., in most all cases, there will be one substitute claim for each claim replaced.
  • For each proposed substitute claim, the patentee must identify the challenged claim that it replaces.
  • The list of proposed substitute claims must identify any new subject added to or deleted from the original claim.
  • The motion “must identify how the proposed substitute claims are to be construed, especially where the proposed substitute claims introduce new claim terms.”
  • The motion must “respond to a ground of unpatentability involved in the trial,” presumably the grounds on which the replaced claim is reviewed.
  • A challenged claim may not be broadened in any respect.
  • The motion must expressly identify the written description support in the original application (not the issued patent) for a proposed substitute claim.
  • The patentee “bears the burden of proof in demonstrating patentability of the  proposed substitute claims over the prior art in general, and thus entitlement to add these proposed substitute claims to its patent.”
  • The patentee must explain why the proposed substitute claims are patentable over all prior art of record, not merely over the prior relied upon for the grounds of review.
  • A conclusory statement by the patentee or its expert that the proposed substitute claims are patentable over the prior art references is insufficient.

The APJs denied Emcore’s motion and, in doing so, elucidated on these principles.  First, the APJs concluded that the motion had failed to propose a reasonable number of substitute claims.  “Emcore generally identifies the challenged claims, as a group, to be cancelled and identifies the proposed new claims, as a group. Id. Emcore fails to demonstrate which proposed new claim is replacing which specific challenged claim.”

Second, the motion failed to comply with the claim listing requirement because it did not identify all the changes between the original claims and the proposed substitute claims.  Specifically, the motion failed “to identify the limitation in proposed claim 18—‘wherein the top layer prevents cratering of the semiconductor during bonding’—as a new limitation, and fails to identify the limitation in claim 2—‘wherein said annealing step is performed at about 400-600 ºC’—as a deletion.”

Third, the motion construed three claim terms, but did “not provide any constructions for the new claim terms recited in its proposed substitute claims.”

Fourth, the APJs found that the motion did not comply with the requirement of responding to a “ground of unpatentability.”

Emcore does not explain adequately why the removal of all those limitations is responsive to a ground of unpatentability. Emcore fails to appreciate that a patent owner may not seek to broaden a challenged claim in any respect, in the name of responding to a ground of unpatentability. A proposed substitute claim is not responsive to a ground of unpatentability of a challenged claim if it removes any feature of the challenged claim being replaced, and even more so, as here, if all of the features of the challenged claim are being removed. 

(Emphasis added).  

Fifth, the motion did not

cite to the originally-filed specification of the ’965 application for the actual claim language of each proposed substitute claim. Although Emcore cites to the ’215 patent, that alone is insufficient. For instance, Emcore provides a citation, without any explanation, to the patent claims that may or may not be a part of the original disclosure—“Proposed claim 21: See, e.g. existing claims 6, 14, and 15.” Mot. A. 5. Such a vague statement is inadequate to determine the written description support for Emcore’s proposed substitute claims.

(Emphasis added). 

And sixth, the motion failed to explain adequately why the proposed substitute claims are patentable over the prior art.  The patentee presented an expert declaration on this point, but the

declaration does not discuss each new feature added in the proposed substitute claims. Neither Emcore’s motion, nor Dr. Goorsky’s testimony, discusses the level of ordinary skill in the art, explaining the basic knowledge and skill set already possessed by one of ordinary skill in the art, with respect to the new claim features. Limiting the discussion to the references relied upon in the instituted ground of unpatentability does not provide a meaningful analysis.

 (Emphasis added). 

 Was the APJs’ denial of the motion to amend based on the cumulative impact of the six requirements discussed above?  Or would they have denied the motion for failure to comply with any of the requirements?  One senses the latter.  Permeating the decision is the belief that the APJs need to be as strict as they are in order to deal with the volume of review proceedings.  As that volume increases, the APJs are unlikely to relax their standards.

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