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).

The patent at issue in that IPR (U.S. Patent No. 7,579,016) is directed to a method of repelling arthropods by treating an object or area with a class of compounds, known as isolongifolenones. In its motion to amend, the patent owner requested cancellation of the original 26 claims (including 1 independent claim) and entry of 19 new claims, which included 2 independent claims. The first proposed independent claim limited the original independent claim by incorporating an original dependent claim that reduced the scope of the class to 5 specific analogs of isolongifolenone. The second independent claim limited the scope of the original independent claim by repelling only ticks and mites.

The Board analyzed the proposed claims, noting that they did not broaden the scope of the original claims and that the patent owner had indicated sufficient support for the proposed claims in the specification. The Board then turned to the patent owner’s evidence that the amended claims were patentable over the prior art cited as part of the IPR, as well as all prior art in general. The evidence provided by the patent owner included experimental data, several publications, and an expert declaration, which, as noted by the Board, demonstrated the level of ordinary skill in the art, as well as the apparent patentability for the first proposed independent claim. However, the Board noted that the second proposed independent claim merely claimed a new benefit of an old process, which was not patentable. Accordingly, the Board granted the patent owner’s motion with respect to the first proposed independent claim and its corresponding dependent claims and denied the patent owner’s motion with respect to the second independent claim. IPR2013-00124, Paper 12 (May 20, 2014).

IPR2013-00124 provides a useful blueprint for proposing amended claims and successfully showing by a preponderance of the evidence that the proposed amended claims are not broader, are sufficiently supported by the original specification, and are patentable over the prior art in general. Particularly, patent owners should consider the type of evidence (including publications, experimental data, and expert testimony) that might be required to obtain the Board’s approval.