A patentee may be required to show that substitute claims submitted during IPR are patentable over the prior art of record, including prior art that was not part of the original bases of unpatentability for which review of the claims being substituted was instituted. Here, for example, the patentee’s motion to amend claims 1 and 3 during IPR proceedings was denied on the basis that the amendments were not shown to be patentable over prior art applied to claims 6, 7, and 9. “If the patentee were not required to establish patentability of substitute claims over the prior art of record, an amended patent could issue despite the PTO having before it prior art that undermines patentability.” It may therefore be best when seeking substitute claims during IPR to address the patentability of the substitute claims over not only the prior art cited against the original claims in the institution decision, but also all other prior art of record applied against other claims.
Background / Facts: The patent on appeal here from inter partes review (“IPR”) proceedings at the PTO relates to a system for increasing the speed of data access in a packet-switched network. During the proceedings, the patentee filed a motion to amend, seeking to substitute new claims for claims 1 and 3. The Board denied the motion to amend, concluding that the patentee did not meet its burden of establishing that it was entitled to the amended claims, and rejecting the patentee’s argument that it did not need to establish patentability over a reference that was not part of the original bases of unpatentability for which review of claims 1 and 3 was instituted. The legal framework provides that a patentee must “move to amend the patent,” § 316(a)(9), that the Director should incorporate only those amended claims that are “determined to be patentable,” § 318(b), and that the patentee has the burden to “establish that it is entitled to the requested relief,” § 42.20(c).
Issue(s): Whether the PTO can deny a patentee’s motion to amend certain claims for failure to establish patentability over a prior art reference that the PTO did not rely on when instituting review of those particular claims.
Holding(s): Yes. “The [PTO] Board has reasonably interpreted these provisions as requiring the patentee to show that its substitute claims are patentable over the prior art of record, at least in the circumstances in this case. First, nothing in the statute or regulations precludes the Board from rejecting a substitute claim on the basis of prior art that is of record, but was not cited against the original claim in the institution decision. Second, the very nature of IPRs makes the Board’s interpretation appropriate. During IPRs, once the PTO grants a patentee’s motion to amend, the substituted claims are not subject to further examination. Moreover, the petitioner may choose not to challenge the patentability of substitute claims if, for example, the amendments narrowed the claims such that the petitioner no longer faces a risk of infringement. If the patentee were not required to establish patentability of substitute claims over the prior art of record, an amended patent could issue despite the PTO having before it prior art that undermines patentability. Such a result would defeat Congress’s purpose in creating IPR as part of ‘a more efficient and streamlined patent system that will improve patent quality and limit unnecessary and counterproductive litigation costs.’”