United States: PTAB Provides Guidance On Motions To Amend

In October, in Corning Optical Communications RF, LLC v. PPC Broadband, Inc.1, the Patent Trial and Appeal Board (PTAB) explicitly provided "guidance regarding the requirements of a motion to amend," a summary of which follows.2

  1. A Motion to amend can only cancel claims or propose substitute claims. The PTAB's consideration of a proposed substitute claim is "contingent." In other words, the PTAB will only consider a proposed substitute claim if "the original claim it replaces is determined unpatentable or cancelled by the Patent Owner." There is no such limitation for cancelled claims.
  2. Only one substitute claim per patent claim. The PTAB places strict limits on the scope of substitute claims. Absent well-articulated special circumstances, the Patent Owner can only introduce one proposed substitute claim per patent claim on a claim-by-claim basis. Each substitute claim has to be "traceable back to the original patent claim that it is intended to replace," meaning that each substitute claim has to recite at least the features of the original claim. As explained by the PTAB, "[f]or instance, claim X is properly named as a substitute claim for claim Y if claim X includes all of the features of claim Y." As such, each substitute claim cannot be broader in scope than the original by eliminating claim features or elements, and effectively, a Patent Owner can only narrow the scope of their patents with substitute claims.
  3. The Patent Owner has the burden of proof to show patentability of the claims, provide written support for the claims, and provide a proposed claim construction. In a motion to amend, the Patent Owner bears the burden of proving that each of the proposed substitute claims is patentable; notably, the Patent Owner must show that the claims are patentable over the prior art, not only over the art involved in the proceeding:

    at least with respect to any claim the Patent Owner proposes as a substitute for a patent claim on which trial has been instituted on a ground of patentability over prior art, the Patent Owner must show patentability over the prior art, in general, and not just over the references applied by the Petitioner against the original patent claims.

    To do this, the Patent Owner should provide "sufficient underlying facts" to establish the patentability of any feature added in the proposed substitute claim, including overcoming obviousness:

    it should be revealed whether the feature was previously known anywhere, in whatever setting, and whether or not the feature was known in combination with any of the other elements in the claim. If any such combination was known, the motion should explain the surrounding facts in that regard, and why it would not have been obvious for one with ordinary skill in the art to adapt that knowledge for use with the rest of the claim elements.

    To establish the state of the art, the PTAB suggested including a discussion of the ordinary skill in the art, including educational qualifications and years of experience, the basic skill set in the art, and whether there are textbooks or conventional practices relating to the feature. Notably, the burden is not met by mere "conclusory statements...that the closest prior art are the references in [the] record..."

    Moreover, the Patent Owner must provide written support of all of the features for each of the proposed substitute claims by the "original disclosure of the application." To the extent that the Patent Owner is trying to show support for a substitute claim in one or more of the priority applications, the Patent Owner must establish the "the co-pendency and common-inventor requirements of 35 U.S.C. § 120." The PTAB suggested submitting these applications as an appendix and indicating whether the disclosures of the patent and the priority documents are identical.

    Finally, for new claim terms in the proposed substitute claims "which reasonably can be anticipated as subject to dispute, the Patent Owner should provide proposed claim constructions in the motion to amend." In providing the claim construction, where the Patent Owner intends to rely on the plain and ordinary meaning of claim terms, the "meaning should be provided in the motion, together with the supporting evidence." Moreover, "[i]f a proposed substitute claim adds a means-plus-function element, the corresponding structure, material, or acts described in the specification should be identified."
  4. Manner of presenting substitute claims. The PTAB requires that each substitute claim be "responsive to the ground of unpatentability to the original patent claim for which it is a substitute" and that they be provided in a claim list wherein each substitute claim has a new claim number and indication of the changes relative to the original claims. While the PTAB has no strict requirements to show changes, "use of brackets to indicate deleted text and underlining to indicate inserted text is suggested." In Corning Optical, the PTAB authorized the Patent Owner to submit the substitute claims as an appendix to the motion so that the claims were not counted towards the 15-page limit for motions to amend.

The USPTO has sought and received input from the public on various aspects of PTAB practice including motions to amend. Many of the comments, including those by the American Intellectual Property Law Association and the Intellectual Property Owners Association have been critical of the PTAB practices on motions to amend. Venable will continue monitoring any changes the PTAB may make to its procedures for motions to amend and provide updates.


1 IPR2014-0441 (PTAB October 30, 2014 (Paper 19 (Order on Motion to Amend Claims)).

2 In Corning Optical, the PTAB also ordered the parties to look at four additional decisions with regards to the requirement of a motion to amend: Idle Free Sys., Inc. v. Bergstrom, Inc., IPR2012-00027 (PTAB) (Papers 26 and 66), Nichia Corp. v. Emcore Corp., IPR2012-00005 (PTAB) (Papers 27 and 68), and ZTE Corp. v. ContentGuard Holdings, Inc., IPR2013-00136 (PTAB) (Papers 32 and 33))

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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