Until recently, the PTAB has consistently denied motions to amend claims in IPR proceedings. Under 37 C.F.R. § 42.121 (a), a patent owner can file one motion to amend with a single amended or new claim to replace each withdrawn old claim in an IPR with the prior approval of the Board. However, there have been substantial hurdles for patent owners. Patent owners cannot broaden claim scope, must establish written description support, and must decisively demonstrate patentability of each claim over the general state of the prior art.
It is the third requirement that is most problematic. In Idle Free Sys., Inc. v. Bergstrom, Inc., IPR2012-00027 (PTAB January 7, 2014) (Paper 66), the Board stated that it is insufficient to merely distinguish the proposed amended claims from the prior art applied to the original patent claims. Slip. Op. at 33. Noting that the amended claims would be directly added to the patent rather than examined further (if the Motion was granted), the Board required "the patent owner to show general patentability over prior art," including "set[ting] 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." Id. Because the patent owner in Idle Free failed to discuss the level of ordinary skill in the art and "what was previously known, with respect to each added feature, including the ordinary skill set possessed by such a hypothetical person," the Board denied Patent Owner's motion.
Applying the rationale followed in Idle Free, the Board in International Flavors & Fragrances Inc., v. U.S. Department of Agriculture, IPR2013-00124 (PTAB May 20, 2014) (Paper 12), found that Patent Owner met the burden for demonstrating patentability of the proposed substitute claims 27-44, but found claim 45 unpatentable over the art of record. Slip. Op. at 18. Patent Owner distinguished the proposed substitute claims (i.e., modified isolongifolanone compounds) over the prior art cited in the Decision to Institute. Where Patent Owner failed in Idle Free, Patent Owner in International Flavors presented several additional references and a Declaration of Dr. Aijun Zhang to demonstrate the level of ordinary skill in the art and what the skilled artisan knew with respect to the added features being relied upon to demonstrate patentability. The Board noted Patent Owner's submission of several references showing how small changes in structure contributes to differences in compound properties. The Board found that the cited art only disclosed the analogs of the substitute claims and there was no "reasonable expectation that such modifications would result in a compound having the desired insect repellant activity." Thus, the Board found that Patent Owner had shown, by a preponderance of the evidence, that proposed substitute claims 27-44 were patentable over the prior art generally and granted Patent Owner's motion to amend claims 27-44 and denied Patent Owner's motion to amend claim 45.
Notably, the Petitioner did not oppose the motion to amend, and neither party requested oral hearing. So, it remains to be determined whether an opposing motion would still pass muster at the PTAB.
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