Motion to Amend Denied for Failure to Meet 42.121 Requirements

by | Dec 13, 2018 | Amendment Practice

By Levent Herguner and Matt Johnson – 

On November 26, 2018, the PTAB entered its Final Written Decision in Intel Corp. v. Alacritech, Inc., Case IPR2017-01391, denying Patent Owner Alacritech, Inc.’s Motion to Amend in the inter partes review of certain claims of U.S. Patent No. 7,237,036 B2. The Motion to Amend sought to substitute the original claims of the Patent if the Panel found them unpatentable.

In denying the Motion to Amend, the Panel determined that the Patent Owner did not comply with the statutory and regulatory requirements set forth in 35 U.S.C. § 316(d) and 37 C.F.R. § 42.121. The Panel cited the Federal Circuit’s en banc decision in Aqua Products, Inc. v. Matal, 872 F.3d 1290, 1306-06 (Fed. Cir. 2017), highlighting that “the patent owner must satisfy the Board that the statutory criteria in § 316(d)(1)(a)–(b) and § 316(d)(3) are met and that any reasonable procedural obligations imposed by the Director are satisfied.” Id. at 1305– 06. The Panel also cited the corresponding USPTO Guidance on motions to amend in view of Aqua Products, which provides that the PTAB will not place the burden of persuasion on a patent owner with respect to the patentability of substitute claims presented in a motion to amend in light of the decision. The Guidance notes, however, that patent owners still must meet the requirements for motions to amend under 37 C.F.R. § 42.121 or § 42.221, meaning motions to amend must include written description support, support the benefit of a filing date in relation to each substitute claim, and respond to grounds of unpatentability involved in the trial.

The Panel found that the Patent Owner’s Motion to Amend included insufficient written description for the substitute claims. The Patent Owner had argued that it included the required written description support in its claim charts, but the Panel agreed with Petitioner that the Patent Owner did not attempt to explain how the substitute claims were supported by those disclosures. The Panel underlined that the Aqua Products decision, which held that patent owners need only meet the burden of production when amending their claims, did not overturn the PTAB’s decision in Respironics, Inc. v. Zoll Med. Corp., Case No. IPR2013-00322, 2014 WL 4715644, at *13 (P.T.A.B. Sept. 17, 2014). In Respironics, the PTAB had held that mere string citations without explanation are insufficient to meet even the lower threshold burden of production because the Board is not responsible for searching through the string citations to find sufficient written description support for each element. Accordingly, the Panel determined that the Patent Owner failed to meet this lower burden, establishing an independent basis for the Panel to deny the Motion to Amend.

The Panel also found that the Patent Owner’s Motion to Amend proposed a substitute independent claim that improperly enlarged the scope of the original independent claim. Per 35 U.S.C. § 316 and 37 C.F.R. § 41.121, motions to amend may propose one reasonable substitute for each challenged claim if they do not enlarge the scope of the claims of the patent or introduce new subject matter. The Panel did not agree with the Patent Owner’s premise that no apparatus could infringe the substitute claim without infringing the original claim. The Panel further noted that the substitute claim’s language changed the instructions that would run on a stated second processor, and removed a requirement from the original claim that required the second processor to process a message packet. Accordingly, the Panel concluded that the Patent Owner broadened the scope of the original claim, establishing another independent basis for the Panel to deny the Motion to Amend.

Takeaway – The denial of the Motion to Amend shows the PTAB’s approach to IPR claim amendments following the Federal Circuit’s Aqua Products holding. The decision reflects that, although the Board recognizes that patent owners need only meet the burden of production, motions to amend must include sufficient written description support and cannot improperly enlarge the scope of the original claims.

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Matthew Johnson

Partner at Jones Day
Matt Johnson is one of the Firm's primary contacts on practice before the PTAB. Currently co-chairing the Firm's PTAB subpractice and involved in proceedings at the Board since the first day of their availability in September 2012, Matt regularly represents clients as both petitioners and patent owners at the Board. He further works as an advocate for clients in appeals from Board proceedings at the Federal Circuit.