Additional Hurdles to Amend Claims During Inter Partes Review

In its second Inter Partes Review (IPR) decision on the merits, the USPTO’s Patent Trial and Appeal Board (PTAB) further clarified the standards for amending claims in Idle Free Systems Inc. v. Bergstrom Inc. (Case No. IPR2012-00027).

Not only did the PTAB hold all of Bergstrom’s claims invalid based on prior art, but it also denied their motion to amend claims because Bergstrom failed to satisfy its burden of proof to show that it should be allowed to make such claim amendments.  Claim amendments are not entered automatically in IPR, and instead are only entered upon a demonstration of the patentability of those claims.  In this case, the PTAB denied its motion because Bergstrom failed to demonstrate that its proposed amended claims were patentable over the prior art.

The PTAB explained that Bergstrom failed to prove that its proposed amended claims were patentable, and importantly had not shown what one of skill in the art would have known with regard to the proposed amended claims.  The PTAB stated as follows:  “without having discussed sufficiently … the level of ordinary skill in the art and what was previously known regarding the features on which Bergstrom focuses for establishing patentability, Bergstrom has not set forth a prima facie case for the relief requested or satisfied its burden of proof.”

Bergstrom had argued that it amended claims were distinguishable over the closest prior art addressed in the IPR.  The PTAB did not disagree with these arguments, but required Bergstrom to describe the level of skill in the art in terms of the skill set and ordinary creativity of one of ordinary skill in the art.  The PTAB explained that Bergstrom had an obligation to distinguish over not only the prior art of record, but also other prior art or which it was aware, and a blanket statement to this effect is insufficient.  In other words, Bergstrom had an obligation to generally address whether the features added by amendment were known in any context, and if so why its features are patentable in the context of the claimed invention.

In order to amend claims in IPR, the significance and usefulness of the added limitations should be established from the perspective of the level of ordinary skill in the art, which then should be defined in terms of the level of creativity and skill set.  The patent owner needs to explain what it knows about the level of ordinary skill in the art, and what was previously known regarding each feature on which it relies for establishing patentability of the amended claims.  In other words, the patent owner must establish, in the context of the prior art of which it is aware, that the added limitations are sufficiently different such that one of ordinary skill in the art would not have arrived at the claimed invention.

The PTAB’s explanation for the standard for amending claims in Idle Free Systems Inc. v. Bergstrom Inc. is significant because of the newness of IPR and corresponding lack of precedent.  According to this decision, the patent owner has the burden to show patentability of amended claims over the prior art because IPER constitutes an adjudicated proceeding as opposed to examination at the USPTO.  In other words, according to the Idle Free Systems case, the PTAB will not be examining claims such as would be performed by an examiner during prosecution.  Instead, the movant for amending claims in IPR is required to show that it is entitled to the relief requested.