In an inter partes review (IPR) proceeding, a patent owner may file one motion to amend the patent in one or more of the following ways: (a) cancel any challenged patent claim, or (b) for each challenged claim, propose a reasonable number of substitute claims. 35 U.S.C. §316(d). 1290. With regard to substitute claims, the Patent Owner needs to demonstrate that (1) the amendment is responsive to a ground of unpatentability raised in the IPR, (2) that amendment does not broaden the scope of the claims or introduce new subject matter, and (3) the amendment proposes a reasonable number of substitute claims. 37 C.F.R. §42.121.
Through the end of Fiscal year 2017 (which ended on September 30, 2017), only fourteen motions to amend had been granted out of 275 completed trials in which a motion to amend was filed.
In October of 2017, the patent appellate court (CAFC) ruled that that Board must assess the patentability of the substitute claims proposed by the patent owner “without placing the burden of persuasion on the patent owner.” Aqua Products, Inc. v. Matal, 872 F.3d 1290 (Fed. Cir. 2017). It is not yet clear whether this ruling will significantly impact the PTAB’s reluctance is granting motions to amend. But in a recent IPR (IPR2016-01737) in which Apple had challenged certain claims of U.S. Patent 8,880,862 (the “’862 Patent”) owned by Realtime Data LLC, the PTAB granted the Realtime’s motion to amend.
The ‘862 Patent relates to “providing accelerated loading of operating system and application programs upon system boot or application launch,” and the use of data compression and decompression techniques for such purpose. Apple had challenged certain claims of the ‘862 Patent as being obvious in view of combined teachings of a number of references. After the institution of trial, the patent owner filed a Patent Owner Response to rebut the petitioner’s obviousness allegations and further filed a contingent motion to amend.
The PTAB ruled that the challenged claims were in fact obvious in view of the art cited by Apple, but granted Realtime’s motion to amend. The PTAB noted that the patent owner sought to add 55 substitute claims to replace the 55 challenged claims, where each substitute claim added limitations that narrow the scope of the claim that it replaced. The PTAB further noted that the patent owner identified support in the original disclosure for the proposed substitute claims including the narrowing amendments. Further, the narrowing amendments were in direct response to the grounds of unpatentability raised in the trial. Thus, the PTAB concluded that the patent owner had satisfied the procedural requirements of filing a motion to amend.
With regard to the distinction of the substitute claims relative to the art cited by the petitioner, the PTAB emphasized that the patent owner did not have the burden of persuasion with respect to the patentability of the substitute claims. The PTAB indicated that it determines “whether the substitute claim is unpatentable by a preponderance of the evidence based on the entirety of the record, including any opposition made by the petitioner.” The PTAB concluded that based on the entirety of the record, the preponderance of the evidence showed that the petitioner had failed to establish that the proposed substitute claims were obvious over the art cited by the petitioner.
Notwithstanding patent owner’s success in this IPR, patent owners may need to wait for future decisions of PTAB regarding motions to amend to determine whether filing a motion to amend is a tool that can be effectively utilized in defending challenged patents before the PTAB.