While the Leahy-Smith America Invents Act (AIA) provides a mechanism that allows amendments to patents challenged in an inter partes review, until recently, all motions to amend have failed. The final decision in International Flavors & Fragrances, Inc. v. United States marks the first time the Patent Trial and Appeal Board (PTAB) (at least partially) granted a patentee's motion to amend.1 The decision highlights the potential value of a motion to amend in an inter partes review and also provides some guidelines on how to succeed.
I. An Inter Partes review can be resolved by amendment, but the burden is quite high.
During an inter partes review, a patent owner may
motion the PTAB to amend the patent by: (1) cancelling challenged
claims; or (2) proposing a reasonable number of substitute claims
for challenged claims. 2 The substitute claims
cannot enlarge the scope of the original claims nor introduce new
matter. 3 Moreover, there is a general presumption that
"only one substitute claim would be needed to replace each
challenged claim." 4 Further, the patent owner must
establish that it is entitled to the relief requested. 5
This has been interpreted by the PTAB as requiring the patent
owner to establish that the substitute claims are patentable.
6 Accordingly, the bar for succeeding with such a
motion is quite high.
However, patentees that succeed with such a motion may be able to
effectively terminate an inter partes review by cancelling
all of the challenged claims or by amending the claims to overcome
the art used as a basis of the review. This is precisely what the
patentee achieved in International Flavors.
At issue in International Flavors was the validity of
certain claims of U.S. Patent No. 7,579,016 (the '016 patent).
The '016 patent is directed to methods of repelling arthropods
by treating an object or area with at least one isolongifolenone
analog. International Flavors & Fragrances petitioned for
inter partes review of claims 1, 4, 5, 7, 8 and 14 to 26
of the twenty-six claims of the '016 patent. The PTAB
instituted review as to all of the challenged claims. Rather than
filing a Patent Owner Response, the patent owner filed a motion to
amend requesting cancellation of the original claims and addition
of substitute claims 27 to 45. The motion was unopposed. Moreover,
the parties indicated that they did not intend to file any
additional papers and that no substantive hearing would be
requested. The PTAB granted the motion as to claims 27 to 44,
denied the motion as to claim 45, and issued a final decision
terminating the inter partes review.
II. It is possible to establish that the substitute claims are patentable.
In International Flavors, the PTAB clarified the burden
of showing patentability over the prior art. Merely distinguishing
the proposed claims from the prior art applied during prosecution
of the patent is insufficient. Rather, the patent owner must
"demonstrate patentability of the proposed claims over the
prior art in general, and thus entitlement to the proposed
claims." 7 Although, the patentee is not
"assumed to be aware of every item of prior art presumed to be
known to a hypothetical person of ordinary skill in the art,"
to meet the burden, "the patent owner should discuss, as well
as present evidence, if appropriate, as to the level of ordinary
skill in the art, and what was known regarding the features being
relied upon to demonstrate patentability of the proposed
claims." 8
This analysis is not conducted in a vacuum, and from a practical
standpoint, the patent owner obviously has to address the
patentability of the substitute claims over the references at issue
in the inter partes review. 9 To do this,
the patentee has to identify the feature that distinguish them from
the prior art, and then establish the non-obviousness of the
claims' distinguishing features.10 To establish
non-obviousness, the patent owner must demonstrate the level of
ordinary skill in the art and provide evidence regarding what would
have been understood by the ordinary artisan as to those features
being relied upon to demonstrate patentability of the proposed
claim. 11
While a motion to amend is likely to be fact specific, the decision
in International Flavors shows that this burden can be met
by presenting focused arguments as to the patentability of the
proposed substitute claims supported by evidence such as
contemporaneous publications and an expert declaration. To prevail,
the arguments and supporting materials together must convince the
PTAB that the proposed claims are patentable, i.e. neither
anticipated nor obvious.
III. Filing a motion to amend instead of responding to a petition may be a way to streamline an Inter Partes review proceeding.
When a petition requesting inter partes review is filed, a patent owner has the option to file a preliminary response to the petition showing why inter partes review should not be granted. 12 Moreover, after inter partes review is initiated, "a patent owner may file a response to the petition addressing any grounds for unpatentability not already denied." 13 Despite the low success rate patentees have encountered in the past, the PTAB's favorable decision in International Flavors shows that a motion to amend can be another tool for a patentee early in the proceeding to streamline the proceeding. Surviving the challenge does not have to be an "all or nothing" gamble on the claims as originally issued. Where narrower claims would provide adequate protection, a successful motion to amend may be an effective mechanism to simplify or terminate an inter partes review.
IV. Not opposing a motion to amend may be a bad idea.
International Flavors & Fragrances, Inc. did not oppose the
motion to amend. 14 By not opposing the motion, the PTAB
decided the motion solely based on the one-sided landscape painted
by the arguments and evidence presented by the patentee. In light
of this favorable decision on a motion to amend, future petitioners
may want to give greater consideration to opposing a motion to
amend. In particular, since the patentee has to prove the
patentability of the claims, an opposition to the motion to amend
may provide a petitioner with another opportunity to reiterate the
grounds of patent invalidity.
Since covered business method reviews and post-grant reviews also
provide for motions to amend, the lessons learned from the
PTAB's decision in International Fragrances are
equally applicable to those proceedings.15The decision
goes to show that motions to amend have the potential to be a great
tool in AIA trials; a successful motion to amend may resolve the
underlying infringement concerns giving rise to the AIA trial.
However, the decision also illustrates that the current procedures
for motions to amend are far from perfect and in need of
improvement. In a recent Federal Register notice that may be an
implicit acknowledgement of such defects, the USPTO asked for
public comments on what modification should be made to procedures
for motions to amend. Accordingly, we may soon see revisions in the
PTAB's procedures for motions to amend, and hopefully an
increase in successful motions to amend.
Footnotes
1 IPR2013-00124 (PTAB May 20, 2014 (Paper 12)).
2 35 U.S.C. § 316(d)(1); 37 C.F.R. § 42.121.
3 Id.
4 37 C.F.R. § 42.121(a)(3).
5 37 C.F.R. § 42.20(c).
6 IPR2013-00124, slip op at 33 (PTAB May 20, 2014 (Paper 12)).
7 IPR2013-00124 (PTAB May 20, 2014 (Paper 12)), slip.op. at. 11.
8 Id.
9 See id. at 12.
10 Id.
11 Id.
12 37 C.F.R. § 42.107.
13 37 C.F.R. § 42.120.
14 Id. at 2.
15 See 37 C.F.R. §§ 42.221; 42.300.
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.