A Primer On Claim Amendments in Post-Grant Review

by McDermott Will & Emery

Bloomberg Inc. et al. v. Markets-Alert Pty Ltd.

In the final written decision of a covered business method (CBM) review, the Patent Trial and Appeal Board (PTAB) sided with the petitioner, canceling all claims under review. In doing so, the Board provided important guidance for patent owners seeking to amend claims.  Bloomberg Inc. et al. v. Markets-Alert Pty Ltd., Case CBM2013-00005 (PTAB, Mar. 26, 2014). (Medley, APJ).

Petitioner Bloomberg, along with 13 other co-petitioners, filed for CBM review of the patent that Markets-Alert had earlier asserted against the petitioners. The invention related to a trading system that monitors stock data and provides notification to a remote device using a network based system.

The petitioners challenged all four claims of the patent, and CBM review was instituted for all of the claims on three grounds of anticipation and one ground of obviousness.  After institution, Markets-Alert’s patent owner response was dismissed without consideration as it was found by the Board to be non-responsive to the CBM petition and also non-compliant with the controlling statute and rule. The Board did, however, consider Markets-Alert’s motion to amend the claims.  That motion requested both the addition of new claims and also cancellation of the original claims.  Critically, the request to cancel the original claims was not based on any contingency, i.e., entry of the new claims.  Instead, the Board found that “the substitute motion to amend leaves no doubt that Markets-Alert unequivocally requests cancellation of [the original] claims.  Because the request was unqualified, the Board canceled the original claims.

Addressing the motion to amend, Board found that it was deficient for a number of reasons. First, the amendment only pointed out asserted support in the specification for “new” language, i.e., language not in the original claims, but not for the entirety of the claims.  Thus, the Board concluded that the motion did not point out support for the claims in the original disclosure.  Further, the motion failed to provide a proposed construction for certain terms, such as “server-based, scalable, and redundant” as well as other terms the Board believed required clarification.  Rather the motion only explained what the terms did not mean, and the patent owner’s expert failed to adequately explain what the terms would mean to a person of ordinary skill in the art. Without such an explanation, the Board was unable to determine whether there was § 112 support for the claim language in the original disclosure.

Second, the motion sought to remove a limitation that was present in the original claims, without offering an explanation as to how the narrower disclosure conveyed to one with ordinary skill in the art that the inventor had possession of the broader concept in the proposed new claims.

Third, the Board found that the proposed claims did not address the grounds of invalidity alleged in the petition; especially important as the claims were broader than the original claims.

Finally, the motion was found to be deficient because the claims were not identifiable, on a one-by-one basis, as being substitutes for the original claims.

At the end of the proceeding, the Board canceled the original claims and denied entry of the proposed claims.

Practice Note:  This particular CBM proceeding underscores the potential pitfalls facing patent owners seeking to amend and add new claims to a patent under America Invents Act (AIA) review before the PTAB.  Perhaps chief among the lessons learned are that amending claims is not a normal (pre-issuance) prosecution matter, rather it is of motions practice and one in which the patent owner has the burden of proof to show that it is entitled to the amendment(s).  Also, patent owners are advised to make requests for deletion of original claims contingent upon entry of the proposed new claims.

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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