In a recent order, the Patent Trial and Appeal Board (“PTAB” or “Board”) provided additional guidance on an issue that has become somewhat of a white whale for practitioners representing patent owners before the PTAB – successfully amending the claims of a challenged patent during a post grant procedure. 

Much of the difficulty in amending claims during post grant procedures stems from the Board’s early decisions setting forth stringent requirements that a patent owner must satisfy to demonstrate entitlement to proposed claim amendments.  See, e.g., Idle Free Systems Inc. v. Bergstrom Inc., IPR 2012-00027, Paper 66 (PTAB); Toyota Motor Corp. v. Am. Vehicular Sciences, LLC, IPR2013-00419 (Paper 32).  These decisions place the burden on the patent owner to demonstrate patentability of the amended claims, not just as to the prior art cited in the proceeding, but any prior art of which the patent owner is aware.  Part of the rationale for these requirements is that claims are not examined in post grant procedures as they are in ex parte examination – no prior art searches are conducted, and no claim rejections are made. 

In the case at issue, Corning Optical Communications RF, LLC (“Corning”) filed a petition for inter partesreview of U.S. Patent No. 8,562,366 (the “‘366 Patent”) after patent owner PPB Broadband, Inc. (“PPB”) filed suit against Corning alleging infringement of the ‘366 Patent.  After trial was instituted, PPB initiated a conference call with the Board to satisfy the confer requirement of 37 C.F.R. § 42.121(a) for filing a motion to amend claims.  Following the conference call, the Board issued an Order on October 30, 2014 setting forth several guidelines for satisfying the requirements for a motion to amend claims. See Corning Optical Communications RF, LLC v. PPB Broadband, Inc., IPR2014-00441 (PTAB) ( Paper 19).

The Board acknowledged that the patent owner is not expected to know everything that a hypothetical person of ordinary skill in the art is presumed to know, but reiterated that the patent owner is expected to reveal what it does know about the prior art.  The Board noted that where the feature or combination of features relied upon for patentability in a motion to amend were previously known, the patent owner should explain the surrounding facts, and why it would not have been obvious for a person of skill in the art to adapt that knowledge for use with the other elements in the claim at issue.  The Board provided pragmatic examples of appropriate discussion of the level of skill in the art in explaining why features of the amended claims would not be obvious.  For example, the Board states that “[i]t would be useful to know . . . whether there are textbooks or conventional practices relating to the feature, and what basic skill set would be possessed by one with ordinary skill in the art.”

The Board also provided practical guidance on satisfying the written description requirement in demonstrating that proposed claim amendments are entitled to an earlier effective filing date where the subject patent is part of a chain of priority applications.  Rather than identifying written description support in each application in the chain of priority, the Board suggested (i) seeking a stipulation with the petitioner that each application in the chain of priority has identical substantive disclosure with respect to the application, as filed, which issued as the patent at issue; and (ii) citing only to the application, as filed, which issued as the patent at issue, when discussing entitlement to an earlier effective filing date of an application in the chain of priority applications.  This approach would reduce the number of pages needed to address the written description requirement, and thereby help patent owners better utilize the 15 pages permitted for motions to amend.

Additionally, in what appears to be a first for motions to amend in post grant proceedings, the Board authorized proposed claim amendments to be placed in an appendix such that the claim amendments do not count towards the 15-page limit of motions to amend.  Previously, proposed claim amendments counted towards the 15-page limit.  See, e.g., ZTE Corp. v. ContentGuard Holdings, Inc., IPR2013-00136 (PTAB) (Paper 33).  Allowing patent owners to include proposed claim amendments in an appendix will likely free up a significant portion of the motion, allowing patent owners to more fully articulate why they are entitled to the proposed claim amendments.

The Board’s recent order in the Corning case is but one example of the Board providing additional guidance on satisfying the requirements of a motion to amend.  Despite continued guidance from the Board and somewhat relaxed procedural requirements, however, successfully amending claims during a post grant procedure appears to still be a formidable task under current PTAB practice.  Notably, the Board’s practice with respect to claim interpretation and claim amendments is currently under review by the Federal Circuit in In re Cuozzo Speed Techs. LLC, Fed. Cir., No. 14-1301, argued 11/3/2014, where the panel of judges reportedly expressed skepticism during oral arguments on the Board’s position regarding its claim interpretation and claim amendment practices.