As discussed yesterday, on June 5, 2015, for just the second time in IPR history, the Board granted a patent owner’s contested motion to amend claims. Reg Synthetic Fuels, LLC v. Neste Oil Oyj, IPR2014-00192 (PTAB June 5, 2015).¹ Are the facts of Neste really so different from the dozens of motions to amend the Board has previously denied, or has something changed?
From the beginning, the Board raised a very high hurdle for claim amendments. The Board often cited Idle Free Systems, Inc. v. Bergstrom, Inc., IPR2012-00027 (PTAB June 11, 2013), a decision the USPTO website lists as a “Representative Decision on Motions to Amend.” Idle Free describes in detail a Patent Owner’s burden in showing that amended claim are patentable over prior art, including the patent owner’s burden to not only address “the closest prior art,” but all prior art “known to the patent owner.” Id. at 6-10.
Perhaps the Board is distancing itself from Idle Free with mounting criticism of what many feel to be an impractical standard.
In Neste, the Board cites Idle Free, as it almost always does, but something did change. The Board stated that “[w]hile not required to prove that the claims are patentable over every item of prior art known to a person of ordinary skill, Neste is required to explain why the claims are patentable over the prior art of record.” Neste, Paper 48 at 19. Idle Free, though, does not limit a patent owner’s burden to demonstrating patentability over the prior art of record. Idle Free states that the burden covers the prior art of record, “and also prior art known to the patent owner.” Neste, Paper 26 at 7 (emphasis added). Perhaps the Board is distancing itself from Idle Free with mounting criticism of what many feel to be an impractical standard.
The Board acknowledged that Neste did not address at least three known prior art references. Id., Paper 30 at 2-5. The Board, however, found that because those three references were not cited as relevant to “any new issue raised by the Motion to Amend,” the case is distinguishable. Id. at 20. The petitioner raised the three known, but unaddressed, prior art references to rebut the patent owner’s teaching away argument.
Maybe this is an exception the Board has always intended to enforce. Or maybe the Board is feeling some Congressional momentum through proposed legislation like The STRONG Patents Act of 2015, which states that amendments “shall” be allowed. Either way, it appears as though the road to successful IPR claim amendments may have gotten a little easier.
¹ In December 2014, the Board previously granted a Patent Owner’s contested motion to amend claims in IPR2013- 00402-403. Before that, the Board granted the United States Government’s uncontested motion to amend claims in IPR2013-00124.