Can claims be substituted in Inter Partes Review?

In ex parte re-examination , and more recently in inter partes re-examination , a owner facing dismissal on legislative grounds by an inspector will apply revised claims for further examination by the USPTO in a procedure close to that of amending claims during the initial . Congress made some critical changes to the Act in 2012, the enactment of AIA (America Invents Act). One reform was the implementation of an inter partes examination (‘IPR’) -produced to contest the legitimacy of granted as an affordable method for a third party. Making it from examinational to adjudicatory. The owner has to follow a procedure during these post-grant hearings to amend the grounds of the disputed , also known as ‘substituting’ claims.

While allowed under the law, the owners’ several attempts to replace the claims have been largely unsuccessful during IPR. As of October 1, 2016, there were just five successful motions to change the IPR proposal for replacement claims. Claim amendments in inter partes review have many overlapping similarities with amendments in re-examination . For example, in all cases, the owner is forbidden to broaden the scope of the initial claims or to add new matters, the amendments must respond to the prior art, the modified claims are not considered to be true as the claims of the lawsuit, and the intervening rights are available if the scope of the amended claim is not “substantially identical” to that of the original claim. A much more important difference between the modifications in the re-examination and the others in IPR is the burden of proof. In the case of re-examination, as in the case of ordinary , it is for the examiner to “make a thorough investigation of the available prior art relating to the subject matter of the claimed invention.” The examiner must then clearly explain the basis for each claim rejection. In IPR, there is no examiner involved. Once a prima facie case has been established by the owner that the proposed substitute claims are patentable, the burden transfers to the petitioner who can either contradict the prima facie case by way of the argument or look for additional prior art, making the proposed substitute claims unpatentable.

In Nike Incorporated v. Adidas AG1, the Federal Circuit rejected the argument that “inter partes review … the petitioner shall have the burden of proving a proposition of unpatentability”, and held that, the patent owner carries some affirmative duty to justify substitute claims. Putting the burden on the owner of the patent to justify right to a substitute claims are compatible with the fundamental intent of IPRs-to provide a more effective and simplified patent mechanism that increases the accuracy of and eliminates needless and counterproductive costs of . The rules allow owners to restrict their possible amendment claims to those which are both necessary and more obviously patentable in relation to the prior art by giving the patent owner only a single opportunity to file a petition for amendment. This claim modification procedure would not allow a full remodelling of the claim system, unlike re-examination.

The proprietor of the patent shall clarify in depth the prior art lessons as they apply to the additional restrictions and also explain how the invention becomes distinguishable from the prior art in the proposed claims. Sometimes, this responsibility is underestimated or mistaken. In HTC Corp. v. Specialized Audio Equipment, LLC2, the patent owner argued that in its petition to amend, it could not reasonably address them all with almost 200 prior art record references. Although the patent proprietor may have been correct about the feasibility of addressing a reference to the prior art, it is not what the PTAB demands and held that, “no effort was made to discuss the state of the art as of [the priority] date, or provide any prior art references beyond those already of record that might be material to the added limitations.”.

A requirement was laid down in Idle Free Systems, Inc3. case for dependent proposed claims that, “the patent owner should provide meaningful reasons for additional modifications to dependent claims”. There are also cases when PTAB it denied motions to amend dependent substitute claims with additional modifications by analyzing the dependent claims by “assum[ing] the parent claims to be prior art.”

When IPRs is adopted as an adjudicative method by Congress to replace the re-examination patent owners should be mindful of the considerable variations between amending claims in a re-examination and replacing claims in an IPR. The patent owner, as the moving party, carries the burden of demonstrating a patentable difference between each new replacement claim and the prior art while pursuing an amendment to the IPR. This duty of showing that the owner of the patent is entitled to substitution claims is important, and numerous efforts to replace claims during the IPR have been largely unsuccessful. By adhering to the criteria set out by the PTAB and upheld by the Federal Circuit in recent rulings, patent owners will increase their odds of successful claim modifications.