In an Inter Partes review (IPR) proceeding before the PTAB, a patent owner is not automatically afforded the right to amend the challenged claims. Rather, the patent owner has a burden of establishing that it is entitled to amend one or more of the challenged claims. 37 C.F.R. §42.20(c). To this end, the patent owner must first confer with the Board regarding a proposed motion to amend. After the patent owner receives the Board’s approval, it must file a motion to amend contemporaneous with or prior to the patent owner’s response. 37 C.F.R. §42.121(a)(1). The proposed amendments must be in response to a ground of unpatentability involved in the trial, and may not enlarge the scope of the original challenged claims. §37 C.F.R. 42.121(a)(2)(ii) and 35 U.S.C. §316(d).

In addition, the Board has held that the patent owner bears the burden of proof to demonstrate the patentability of the proposed claims, not only with respect to the prior art references on which the trial was instituted, but also over the prior art in general. Idle Free Sys., Inc. v. Bergstrom, Inc. (IPR2012-00027). The PTAB has explained that the requirement to distinguish the proposed claims over prior art in general does not mean that the patent owner is “assumed to be aware of every item of prior art presumed to be known to a hypothetical person of ordinary skill in the art.” Id. Rather, the patent owner should discuss, and present evidence (if appropriate), regarding the level of ordinary skill the art and what was known in the relevant timeframe about the features being relied on to demonstrate patentability of the proposed claims.

The requirement to show the patentability of the proposed amended claims over prior art in general has been an important factor in the Board’s repeated denial of motions to amend. In fact, the Board had not granted any motion to amend until last month when the Board granted the patent owner’s motion to amend with respect to certain challenged claims in International Flavors & Fragrances Inc. v. The United States of America (IPR2013-00124).


Continue Reading PTAB Grants a Patent Owner’s Request to Amend

The regulations implementing Inter Partes Review (“IPR”), as well as Post-Grant Review (“PGR”), allow the Patent Trial and Appeal Board (“Board”) to join or stay certain proceedings by motion or sua sponte. See 37 C.F.R. § 42.122 (IPR), and 37 C.F.R. § 42.222 (PGR). This provision seems to make a good deal of sense in terms of avoiding duplication of effort and possible inconsistent results.
Continue Reading Too Many Cooks in the Kitchen? – PTAB Puts Parallel Reviews By Central Reexam Unit on Hold

On June 11, 2013, the Patent Trial and Appeal Board (PTAB) rendered its first decision in a case under the new AIA procedures for administratively contesting patents.  In the case of SAP America, Inc. v. Versata Development Group, Inc., CBM2012-00001, Paper 70 (June 11, 2013), the PTAB found Versata’s patent claims ineligible for patent protection because they were drawn to “abstract ideas.”

The petition for review was brought under the Covered Business Method (CBM) post grant review rules, which permit free-wheeling challenges to patents under essentially all grounds that are available (sections 101, 102, 103 and 112 of the US Patent Laws).  (Similar rules for non-business method patent will not kick-in until patents start issuing with effective filing dates on or after March 16, 2013.)

Interestingly, the same parties litigated this same patent (U.S. Patent No. 6,553,350 ) a few years ago in the Eastern District of Texas (Versata Software, Inc. v. SAP America, Inc., 2009 U.S. Dist. LEXIS 45751 at 16-18 (E.D. Tex. 2009)).  In the district court case, the patent was found valid and infringed – and Versata was awarded a $391 million infringement judgment.  Apparently, SAP had not raised the issue of patent ineligibility under 35 U.S.C. 101 during the jury trial.  The district court judgment was affirmed by the Court of Appeals for Federal Circuit (Versata Software, Inc. v. SAP America, Inc., 2013 U.S. App. LEXIS 8838; 106 U.S.P.Q.2d 1649 (Fed. Cir. 2013)).  The Federal Circuit will probably also wind up with an appeal of the PTAB decision since SAP had asked the Federal Circuit to stay the damage award and injunctive relief until the PTAB conducted its review.
Continue Reading PTAB Renders Its First Decision