New IPR Ruling Further Clarifies Burden on Patentees to Amend Claims

by Orrick, Herrington & Sutcliffe LLP

The Patent Trial and Appeal Board (PTAB) issued its second Final Written Decision in a contested case under the AIA's inter partes review process on January 7, 2014.  As with the PTAB's first decision, the petitioner prevailed; every claim under review was held invalid.  The PTAB instituted proceedings on all 23 claims of the patent, but the patentee subsequently conceded the unpatentability of 9 of those claims.  In the January 7 decision, the PTAB found the remaining 14 claims both anticipated and obvious in view of the prior art of record. 

The decision is notable for a few reasons. 

First, it shows that the PTAB is meeting its projected 18-month timeline for IPRs.  The PTAB instituted trial slightly less than six months after the petition was filed, and issued its final written decision less than a year later.  In all, the process took less than 16 months from the filing of the petition. 

Second, the PTAB invalidated all claims.  Although this is only the second decision in a contested case, this fact signals that the PTAB is ready and willing to declare patent claims invalid.  For both of these reasons, it is likely that more accused infringers and other parties will look to IPRs as a means to invalidate patents.  These two factors also increase the likelihood that district courts will stay litigation where the same patents are the subject of pending IPRs.

Third, the PTAB denied the patent owner's request to amend the patent's claims, and discussed in detail the burdens on a patentee to amend claims during the IPR process.  The patentee moved to amend three claims by adding limitations to the existing claims.  The PTAB found that the amended claims were, as required, narrower than the existing claims, that there was adequate written description support for the amended claims, and that the patent owner had demonstrated that the claims were patentable over the art relied upon by the petitioner in the IPR.  Nevertheless, the PTAB denied the motion to amend, finding that the patent owner failed to demonstrate the "patentability of the proposed substitute claims over the prior art in general, and thus entitlement to add these proposed substitute claims to its patents."  (emphasis added)

The patent owner had compared its proposed substitute claims to the primary piece of prior art of record in the petition, which the patent owner identified as the closest prior art.  The PTAB found this insufficient to create a prima facie showing of patentability, noting that IPR proceedings are different from pre-grant prosecution of a patent application or post-grant reexamination.  The PTAB observed that, unlike in the examination context, in an IPR "the proposed substitute claims will be added directly to the patent, without examination, if the patent owner's motion to amend claims is granted."  (emphasis added)  The PTAB appears to be concerned that the lack of examination may cause unwarranted claims to be added to patents via the IPR process.  The PTAB distinguished this situation from pre-grant prosecution of an application wherein the applicant amends claims in response to the Patent Office's arguments why a prior art reference or references bear upon the patentability of the claims.  Instead, in a motion to amend claims in an IPR, it is the patentee's burden to demonstrate the amended claims are patentable over the prior art in general.

The PTAB stated that the patentee "can, and is expected to, set forth what it does know about the level of ordinary skill in the art, and what was previously known, regarding each feature it relies and focuses on for establishing patentability of its proposed substitute claims."  Because the patentee failed to present such evidence, the PTAB denied the motion to amend the claims. 

This decision emphasizes that the patentee carries a heightened burden to demonstrate entitlement to amended claims in an IPR proceeding.  In light of this decision, it is not enough for a patentee merely to distinguish its proposed substitute claims over the prior art of record in the IPR.  A motion to amend should include a discussion of the level of ordinary skill in the art and the reasons why the amended claims are patentable over both the art cited in the IPR petition and other known relevant art. 

The case is Idle Free Systems, Inc. v. Bergstrom, Inc., Case IPR2012-00027.  A copy of the decision is available here.

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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