Amending Claims Before the PTAB: What Have We Learned From the Board?

Article co-written by Yuri Levin-Schwartz, Ph.D., a law clerk at MBHB.

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 a presumption that for every claim at issue, only one substitute claim is reasonable.[7] This does not mean, however, that a patent owner can simply maintain the same total number of claims. Instead, each substitute claim must be traceable back to an original patent claim.[8] In addition, the patent owner should not eliminate any feature or element from the claims.[9] If the patent owner believes that more than one substitute claim is required for one or more particular claims, it needs to justify this request with an articulable “special circumstance.”[10] Finally, not surprisingly, the substitute claim set must identify what the changes are to the original claims, ideally with the use of brackets for deletions and underlining for additions.[11]

In Idle Free, the PTAB warned against adding additional features to dependent claims without incorporating them into the claims from which they depend. For example, regarding challenged claims 1-3, it was perfectly acceptable to propose a substitute claim 4 for independent claim 1, and substitute claims 5 and 6 for dependent claims 2 and 3, “where claims 5 and 6 each read the same as claims 2 and 3, respectively, except for the difference in claim dependency.”[12] However, “if the patent owner also proposes to add further features into proposed substitute claims 5 and 6,” a special circumstance for making such an addition needs to be established. [13] This was demonstrated in practice in the Riverbed Tech. cases.[14] Even though the Board granted in part the patent owner’s motion to substitute claims, it still found that the patent owner had run afoul of the “reasonable number” requirement because it sought to add additional new features to the dependent claims. The Board explained that to make such additional amendments, the patent owner need not only establish patentability over the prior art, but must also demonstrate a “patentable distinction over parent proposed substitute claims.”[15] This amounts to requiring a demonstration as to why the dependent claims would be patentable over the prior art and the parent (independent) claims. And, unfortunately for the patent owner in Riverbed Tech., the Board concluded that it had not sufficiently explained why the additional limitation, in this case storing an additional copy of data, would have been non-obvious in view of the parent claims that also included the storing of a copy of data.[16]

Burden of Proof

The regulations also provide that the patent owner, as the moving party, bears the burden of proof in establishing it is entitled to amended claims.[17] Therefore, unlike almost any other proceeding at the patent office, it is the patent owner that must demonstrate why the claims are patentable. The Board’s justification for this burden shift was that when such a motion is granted, the claim set is added to an issued patent without examination.

It is also important to note that the patent owner bears the burden of establishing that the claims meet every ground of patentability. This is true even though IPRs can only be instituted based on citation to patents and printed publications. Therefore, for example, the Board in the Ariosa Diagnostics v. Isis Innovation Ltd. Final Written Decision, denied a motion to amend claims because the patent owner failed to show patentability under 35 U.S.C. § 101.[18] As the Board stated in that case, “when considering a motion to amend, we do not examine and allow or reject the substitute claims, but determine whether the patent owner has met its burden of establishing that it is entitled to the substitute claims that it seeks in its motion to amend.”[19] In that case, however, the patent owner was on notice because the original claims had already been found by a district court to have failed the eligibility requirements of § 101.


Notwithstanding the outcome in the Ariosa Final Written Decision, the Board has advised that it is the main requirement of the patent owner to show the patentability of substitute claims over the prior art. Unfortunately, this demonstration is not limited to the references cited by the petitioner, but instead must account for all prior art. For example, for any new feature found in the substitute claims, “it should be revealed whether the feature was previously known anywhere, in whatever setting, and whether or not the feature was known in combination with any of the other elements in the claim.”[20] Luckily, the patent owner is not expected to be aware of everything known to a hypothetical person ordinary skill in the art, but the patent owner should reveal what it does know, and how it might be relevant. The patent owner should also explain the level of skill in the art, ideally as it relates to the newly added claim limitation. It is also useful to include any textbooks or conventional practices related to the added feature. And, as we have seen in repeated examples, conclusory statements of patentability are not useful.

With regard to patentability, the motions that were granted by the Board are the most instructive. In Riverbed Tech., the patent owner apparently met its burden by providing a “story” of what the prior art taught, citing to both art of record and otherwise, and explaining why its proposed substitute claims described “a very different approach.”[21] Therefore, instead of the “inflexible approach” of searching data segments used before the present invention, the patent owner explained why the claimed method was a “solution” for the “problems” with the prior art methods.[22] The Board deemed this “problem” and “solution” approach to be persuasive.[23] In International Flavors & Fragrances Inc. v. The United States of America, the claim amendment sought to limit the broadest independent claim to a specific Markush group of five chemical analogs, all of which could be located in the dependent claims.[24] And, even though Board believed that the patent owner’s statement regarding the prior art was conclusory, the explanation of what would have been understood by one of ordinary skill in the art carried the day (with the possible help of an expert declaration and citation to several publications).[25] Specifically, the patent owner cited to several references demonstrating that minor structural changes to the relevant compounds can result in very different properties, especially with regard to repelling insects (as required by these claims).[26] And, because there was not a “small or easily traversed” number of molecules disclosed in the prior art references, the patent owner satisfactorily demonstrated the patentability of the substitute claim set.[27]

It remains to be seen whether the sentiment of apparent futility in seeking substitute claims will be reversed by the recent successes and guidance from the Board. This of course will depend on whether practitioners learn from past mistakes, and whether they will heed the guidance that the Board has been providing for some time now.

[1] See, e.g., 35 U.S.C. § 316(e) (“In an inter partes review instituted under this chapter, the petitioner shall have the burden of proving a proposition of unpatentability by a preponderance of the evidence.”).

[2] No. IPR2012-00027, Paper 26 (P.T.A.B. June 11, 2013).

[3] See id.

[4] USPTO Message From PTAB: How to Make Successful Claim Amendments in an AIA Trial Proceeding, AIA Blog (May 5, 2014, 3:57 PM),

[5] No. IPR2014-00441, Paper 19 (P.T.A.B. Oct. 30, 2014).

[6] See 37 C.F.R. §§ 42.221(a)(2)(i) and (b).

[7] See id. at § 422.221(a)(3).

[8] See Corning Optical, No. IPR2014-00441, Paper 19 at 3.

[9] See Id.

[10] Id.

[11] Id.

[12] Idle Free, No. IPR2012-00027, Paper 26 at 9.

[13] Id.

[14] See Riverbed Tech., LLC v. Silver Peak Sys., Inc., No. IPR2013-00402, Paper 35 (P.T.A.B. Dec. 30, 2014); Riverbed Tech., LLC v. Silver Peak Sys., Inc., No. IPR2013-00403, Paper 33 (P.T.A.B. Dec. 30, 2014).

[15] Riverbed Tech., No. IPR2013-0042, Paper 35 at 29.

[16] Id. at 30; see also Riverbed Tech., No. IPR2013-0043, Paper 33 at 30.

[17] See 37 C.F.R. § 42.20(c).

[18] No. IPR2012-00022, Paper 166 (P.T.A.B. Sept. 2, 2014).

[19] Id. at 51 (emphasis in original).

[20] Corning Optical, No. IPR2014-00441, Paper 19 at 4 (P.T.A.B. Oct. 30, 2014).

[21] See, e.g., Riverbed Tech., No. IPR2013-0042, Paper 35 at 19.

[22] See, e.g., id.

[23] See, e.g., id.

[24] No. IPR2013-00124, Paper 12 at 7 (P.T.A.B. May 20, 2014).

[25] Id. at 12.

[26] Id. at 12-14.

[27] Id. at 15 (quoting Bayer Schering Pharma A.G. v. Barr Labs., Inc., 575 F.3d 1341, 1347 (Fed. Cir. 2009)).



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