Claim Amendment Remains Possible but Unlikely

In Greene’s Energy Group, LLC v. Oil States Energy Services, L.L.C., IPR2014-0261, Paper 18 (August 15, 2014), the Board’s advice to a patent own on preparing a motion to amend is a reminder to the rest of us, that amending claims in a IPR is virtuall impossible.  The amendment must “respond to a ground of unpatentability involved in the trial” and it cannot ” enlarge the scope of the claims of the patent or introduce new subject matter.”  Furthermore amendment is not authorized unless the movant shows that theclaims are patentable.  In the 15 pages allowed, the patent owner must:

identify specifically the feature(s) or limitation(s) added to each substitute claim, as compared to the challenged claim it replaces, and come forward with technical facts and reasoning about those feature(s) or limitation(s), including the construction of new claim terms, sufficient to persuade the Board that the proposed substitute claim is patentable over the prior art of record, and over prior art not of record, but known to Patent Owner.

A mere conclusory statement by counsel in the motion to amend that one or more added features or limitations are not described in any prior art or would not have been suggested or rendered obvious by the prior art is facially inadequate. It also is insufficient for the movant simply to explain why the proposed substitute claims are patentable in consideration of the challenges on which the Board instituted review. Limiting the discussion either to the references already in the proceeding, or to the narrow combination specifically recited in the claim, does not provide a meaningful analysis.

In these 15 pages the patent owner also must clearly identify the written description support for the proposed substitute claims. Merely indicating where each claim limitation individually is described in the original disclosure may be insufficient to demonstrate support for the claimed subject matter as a whole.

There is nothing new here — amendment during inter partes review remains out of reach for most patent owners.





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About Bryan Wheelock

Education J.D., Washington University in St. Louis B.S.E. in Mechanical Engineering, Duke University Bryan Wheelock's practice includes preparation and prosecution of patent and trademark applications and drafting of intellectual property agreements, including non-compete agreements. He has brought and defended lawsuits in federal and state courts relating to intellectual property and has participated in seizures of counterfeit and infringing goods. Bryan prepares and prosecutes U.S. and foreign patent applications for medical devices, mechanical and electromechanical devices, manufacturing machinery and processes, metal alloys and other materials. He also does a substantial amount of patentability searching, trademark availability searching and patent and trademark infringement studies. In addition to his practice at Harness Dickey, Bryan is an Adjunct Professor at Washington University School of Law and Washington University School of Engineering.