Claim Amendments in Inter Partes Review: How? When? Why?

September 11, 2013

This webinar focused on claim amendments during IPR proceedings. We explored the mechanism for amending claims and the limitations that the rules place on claim amendments. We also discussed strategic considerations and offered practice tips relating to claim amendments based upon PTAB decisions and our own experiences.

Dorothy Whelan, Principal and Post-Grant Practice Co-Chair, Twin Cities
Karl Renner, Principal and Post-Grant Practice Co-Chair, Washington, DC
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Webinar Summary

  • PTAB has made clear that primary role of IPR / CBM / PGR is to determine patentability of issued claims
    • PTAB has emphasized that IPR / CBM / PGR is not the proper vehicle for extensive claim amendments such as permitted in reexamination or reissue
  • Strict Limits on Patent Owner’s Ability to Amend Claims
    • Procedural Limits
      • Must first confer with PTAB and then file motion (no later than Patent Owner’s Response)
      • Limited to 1-for-1 claim substitution (absent showing of good cause)
      • Must explain how proposed substitute claim is patentable over all prior art known to patent owner, including prior art outside the record
      • Attorney argument insufficient – need actual evidence (e.g., expert testimony) establishing patentability
      • Motion to Amend must be completely separate from Patent Owner’s Response (e.g., cannot incorporate arguments by reference)
    • Practical Limits (“We’re gonna need a bigger boat!”)
      • All of the above (plus listing of new claim(s)) must fit into a motion that is no more than 15 pages, double-spaced, 14 point font!
      • Petitioner gets to raise new grounds and/or art in response to any substitute claims proposed
    • Practice Tips:
      • Read & heed PTAB’s decision in Idle Free, Inc. v. Bergstrom, Inc., slip op. IPR2012-00027 (June 13, 2013)
        • Provides framework for making claim amendments in IPR proceedings
      • If 15 page limit is truly unreasonable, make your concerns known to Board and ask for relief, but be reasonable in your requests
      • As patent owner, consider filing parallel reissue application if you are seeking extensive claim amendments
      • In conjunction with Patent Owner’s Preliminary Response, consider statutorily disclaiming a challenged claim if tactically advantageous to do so
  • Update on Post Grant Statistics
    • Recent uptick in IPR and CBM filings
      • No PGR petitions filed yet
    • IPR / CBM instituted in almost all cases but usually with pared down grounds and/or claims
    • Stays in related district court proceedings:
      • Granted ~ 70% ; Denied ~ 30%
      • Grant / denial rate is fairly uniform across all jurisdictions
      • Main reasons for denial include prematurity (i.e., pending decision on petition) and advanced state of litigation
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