Amending Claims Before the PTAB:
What Have We Learned From the Board?
By Andrew W. Williams, Ph.D.
When Congress enacted
the America Invents Acts
in 2011, they created
three new mechanisms to
challenge issued claims at
the Patent Office – Covered
Business Method patent
review, Post-Grant Review,
and Inter Partes Review (“IPR”). Congress was
responding, in part, to the public outcry over
too many overly broad issued claims, coupled
with the fact that challenging their validity in
federal court was too difficult, costly, and time-
consuming. Congress therefore designed these
proceedings before the newly formed Patent
Trial and Appeal Board (“PTAB,” or “Board”) to
be resolved expeditiously. Moreover, petitioners
were provided many advantages over similar
actions in district courts, such as a lower
evidentiary standard.1 Perhaps in an attempt to
even the playing field, Congress also statutorily
provided patent owners with a chance to
amend their claims – a benefit not available in
federal court. In practice, however, this ability
has proven all but illusory. As of the end of
2014, only two sets of motions to substitute
claims have been granted (at least in part); one
of these being unopposed and with the patent
owner being the United States of America. As
a result, patent owners without such a home-
court advantage have been asking: “just what
does it take to amend claims before the PTAB?”
In an apparent response to this sense
of frustration, the PTAB has been issuing
instructions and guidance about amending
claims almost since its inception. One of
the earliest examples can be found in one
of the first filed IPRs, Idle Free Systems, Inc.
v. Bergstrom, Inc.2 In that case, the Board
provided the first set of comprehensive
guidance on motions to amend that is still cited
as authoritative today.3 Perhaps in view of the
dearth of granted amendment motions, the
PTAB reiterated this guidance the subsequent
year in a message on the AIA Blog – “How to
Make Successful Claim Amendments in an
AIA Trial Proceedings.”4 Nevertheless, either
practitioners were not paying attention to this
guidance, or more likely, amending claims
was not as easy as the PTAB had suggested it
would be. As a follow-up, the Board released
an order entitled “On Motion to Amend Claims”
on October 30, 2014, in Corning Optical
Communications RF, LLC v. PPC Broadband,
Inc..5 Of course, the cases in which the Board
has granted motions to substitute claims are
probably the most instructive. This article
highlights some of the takeaway lessons from
the Board’s decisions and guidance with regard
to three of the most important issues: the
content of the substitute claim set, the burden
of proof, and the requirement of
the patent holder to establish patentability
of the substitute claims.
The Substitute Claim Set
The PTAB regulations require that the
substitute claim set appear as a claim
listing and be responsive to a ground of
unpatentability.6 Moreover, there is
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A review of developments in Intellectual Property LawWinter 2015 Vol. 13, Issue 1
Page 6
Post-Alice District Court
Decisions
Page 2
Proving Inherent
Anticipation
Page 8
Tips for Developing
a Cost-Effective Foreign
Patent Strategy
Page 5
Supreme Court Holds that
Trademark Tacking Should
be Decided by a Jury
