Standard For Amending Claims In IPR May Need To Change


The Idle Free decision denied the patent owner’s motion to amend claims on the ground that the patent owner had not proven the patentability of the claims over the prior art. Remarkably, the decision makes no reference to the petitioner’s proofs on the issue, but rather denies the motion solely on the basis of perceived deficiencies in the patent owner’s showing of patentability. Under Idle Free, not only is the burden on the patent owner to prove patentability of its amended claims, but “general patentability over prior art” must be demonstrated.

The Patent Trial and Appeal Board routinely cites to Idle Free as setting forth the standard for a motion to amend in an inter partes review. Many believe that the requirements for a motion to amend as articulated in Idle Free are extreme and very difficult, if not impossible, to satisfy. At present, the author is unaware of any decision by the board granting a motion to amend, other than one merely canceling claims. A patent owner’s opportunity to amend its claims in an IPR may be hampered to such an extent that due process concerns may be raised. It appears questionable whether the procedure is consistent with the enacting statute.

Originally published in Law360 on March 13, 2014.

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