PTAB Clarifies Motion to Amend Claims

July 9, 2013

In a pair of recent decisions, the Patent Trial and Appeals Board further clarified the requirements of filing a motion to amend the claims. These recent decisions supplement the Board's recent decisions in IPR2012-00027 (Paper No. 26) and IPR2012-00005 (Paper No. 27) in which the Board provided guidance regarding the filing of motions to amend claims.

On June 26, in Oracle Corporation v. Clouding IP, LLC, IPR2013-00099, the Board (APJs Chang, Kim and Elluru) issued a decision following the patent owner's intention to file a motion to amend the claims. In the telephone conference on the patent owner's motion, the Board noted "that Clouding would have to account for the level of ordinary skill in the art and the basic skill set possessed by one with ordinary skill, and may not limit its consideration to just the references over which this trial was instituted." In other words, in its motion the patent owner must demonstrate that the proposed amended claims address the grounds of rejection in light of the level of ordinary skill of a person skilled in the art as well as over the prior art, including prior art that the Board did not rely upon in granting the petition.

The Board also noted that "when indicating written description support in the specification, [the patent owner] should make reference to the disclosure in the original applications as filed, rather than to the portions of the issued patent, and provide sufficient explanation in addition to citations to the specification."

Finally, the Board explained that "should an expert declaration be submitted in support of a motion to amend claims, the motion itself should set forth the arguments and explanations with appropriate pinpoint citations to the expert declarations, rather than just incorporating by reference the expert declarations."

In Synopsys, Inc. v. Mentor Graphics Corporation, IPR1012-00042, the Board (APJs Blankenship, Medley and Bisk) issued a decision on the patent owner's motion to amend in which the Board dismissed the motion without prejudice because the patent owner failed to list the proposed amended claims in the body of the motion and instead listed them in an appendix. The Board stated that "by doing so, [the patent owner] circumvented the motion page limit [of 15 pages].

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These decisions further clarify the Board's requirements for motions to amend claims. Unlike amending claims in the conventional patent prosecution, the Board first is requiring that the patent owner demonstrate that the proposed amended claims are patentable over the prior art and that such amendments are well supported, including preferably providing evidence of these issues in the form of expert testimony.

Oracle Corporation v. Clouding IP, LLC, IPR2013-00099, Paper 19 (June 27, 2013) and Synopsys, Inc. v. Mentor Graphics Corporation, IPR1012-00042, Paper 30 (June 28, 2013).

The authors of www.PatentLawyerBlog.com are patent trial lawyers at Jeffer Mangels Butler & Mitchell LLP. The authors represent inventors, patent owners and technology companies in patent licensing and litigation in U.S. District Courts and in the United States Patent and Trademark Office, including numerous IPRs currently pending before the PTAB. Whether pursuing patent violations or defending infringement claims, we are aggressive and effective advocates for our clients. For more information contact Greg Cordrey at 949.623.7236 or GCordrey@jmbm.com.