En Banc Query: Must the PTO Allow Amendments in IPR Proceedings?

AquaImageby Dennis Crouch

In its original Aqua Products decision, the Federal Circuit upheld the USPTO’s tight limits on amendment practice in IPR proceedings. Under the rules, a patentee has one opportunity to propose amendments or substitute claims. However, the proposal will only be granted if the patentee also demonstrates in the motion that the proposed amendments would make the claims patentable over the known prior art.

In a new order, the Federal Circuit has now granted the appellant’s en banc rehearing request – asking the parties to focus solely on the following questions regarding the burdens:

(a) When the patent owner moves to amend its claims under 35 U.S.C. § 316(d), may the PTO require the patent owner to bear the burden of persuasion, or a burden of production, regarding patentability of the amended claims as a condition of allowing them? Which burdens are permitted under 35 U.S.C. § 316(e)?

(b) When the petitioner does not challenge the patentability of a proposed amended claim, or the Board thinks the challenge is inadequate, may the Board sua sponte raise patentability challenges to such a claim? If so, where would the burden of persuasion, or a burden of production, lie?

En Banc Order.  The court has invited views of amici curiae.  Those briefs will be due October 5, 2016 (unless supporting the PTO’s position and then you get an extra month).  Appellant’s brief will be filed by September 26, 2016. Oral argument are already scheduled for Friday, December 9, 2016 at 10:00 a.m.

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The underlying case involves Aqua Products’ self-propelled robotic pool cleaner that uses an internal pump both as a vacuum cleaner to power the propulsion system.   U.S. Patent No. 8,273,183.  Competitor Zodiac Pool Systems filed for IPR which the PTO instituted as to some of the challenged claims and ultimately issued a final decision that the claims were invalid as obvious over a combination of two prior-art references.

Motion to Amend: In a timely motion, Aqua moved to amend three of the claims to include the limitations found in the non-instituted claims. (In particular, the patentee asked to substitute claims 1, 8, and 20 with claims 22-24 respectively.  The PTAB agreed that these new claims satisfied the formal requirements of Section 316(d), but refused to enter the amendment – finding that the patentee’s motion had failed to show that the substitute claims were distinguishable over the prior art.

The parties (Aqua & Zodiac) settled the underlying infringement case in April 2015 and so Zodiac did not participate in the appeal. However, the USPTO intervened in the case to defend Aqua’s appeal of the PTAB invalidity holding.

The PTO’s position in the case remains defiant.  The Agency argues that its rules regarding amendments and its application of those rules are both reasonable and entitled to substantial deference.

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102 thoughts on “En Banc Query: Must the PTO Allow Amendments in IPR Proceedings?

  1. Scot’s Post-Grand Olbon blog makes an added point about why claim amendments will remain little-used in IPRs regardless of this case outcome.* Below is the IPR statutory requirement to substitute rather than add claims, which seems to require the patent owner to effectively cancel its original claims being amended [unlike a reexamination’s added claims]. Thus, how could the original claims that are being amended ever continue to be asserted in any pending or future litigation, unless the proposed amendment is not entered? That does seem to be the effect of the IPR claim amendment statute, copied below:
    35 USC 315
    “ (d) Amendment of the Patent-
    (1) IN GENERAL- During an inter partes review instituted under this chapter, the patent owner may file 1 motion to amend the patent in 1 or more of the following ways:
    (A) Cancel any challenged patent claim.
    (B) For each challenged claim, propose a reasonable number of substitute claims.
    (2) ADDITIONAL MOTIONS- Additional motions to amend may be permitted upon the joint request of the petitioner and the patent owner to materially advance the settlement of a proceeding under section 317, or as permitted by regulations prescribed by the Director.”

    *in addition to the impact of the “intervening rights” statute, etc.

      1. Paul, reading what you write with my EPO reading glasses, where you read “substitute” I think “auxiliary Request”. Currently, the EPO Boards of Appeal are very much pre-occupied by what number of such Requests is a “reasonable” number.

        It’s a Small World, at G5 level, and so I’m wondering whether those who wrote 35 USC 315 were inspired by the procedures found in EPO opposition practice.

    1. Paul, your reading is interesting and if it is true that the added claims substitute for the challenged claims, by requesting substitute claims the patent owner is effectively admitting that the challenged claims are unpatentable and would like the IPR to continue on the basis of the substitute claims. But this only adds to the notion that if the substitute claims are not broadening, and are supported, that either the petitioner simply agrees to allow their entry without objection, and which that case the IPR should be terminated at least with respect to those claims, or the petitioner should challenge the substitute claims with evidence and argument proving their unpatentability.

      The way the PTO as structured the administration of substitute claims is effectively to turn an IPR into an effort by the patent owner to prove a negative, that the added claims are not unpatentable over the prior art based upon a non-asserted, hypothetical rejection.

      1. Ned,

        You still have not grasped that ANY substitute claims (appearing for the first time in an IPR) have NOT been truly examined –by the Office.

        Your “no new matter” point is just not enough and certainly not enough is the current “art of record.”

        1. anon, and you have not grasped that these are effectively dependent claims. They are presumed to be patentable over the art. So, add them in and let the challenger blast away if he chooses. If not, then let some other challenger blast away.

          The PTO has does not have it act together. Rather, it has a screw loose.

          1. Yes Ned – previously allowed dependent claims that HAVE BEEN examined and granted not only should be permitted to be reformed in “independent” form, but quite in fact, do not need to be so – as you have pointed out, the dependent claims stand on their own and survive the loss of the independent claim.

            But the picture is bigger than that, and several people have tried several times to engage you with the bigger picture but to no avail.

            Not sure why you disappear when the discussion turns to the bigger picture….

              1. Ned, I – and others – continue to attempt to engage you in a LARGER discussion of the impact here. The situation is simply more than just the immediate “form” issue of making a dependent claim into an indepdendent claim.

                I – and others have been very clear about this.

    2. As Paul as freshly supplied the law her, it bears repeating:

      Taking a step back, since amendments in an IPR are NOT of right, is the refusal of ANY amendment tied to purported legal rationales (say as here one of burdens), or can the Office simply refuse to grant an amendment by any “rule” that they themselves may enact (or by no “rule” whatsoever)…?

      In other words, since NOT “of right,” then (necessarily) “of whim”….

      Look closer at 35 USC 315 (d)(1): the patent owner only has a right to file a motion – no mention (at all) of the latitude or criteria for allowing that motion.

      Look closer at 35 USC 315 (d)(2):again, only the right to file a motion (with additional constraints), and again – no mention (at all) of the latitude or criteria for allowing that motion.

      Malcolm attempted (his usual) bury in ad hominem response, but the point STILL remains on the table: without making an amendment to be of right, it is PURELY of whim.

      1. 35 USC 315
        “ (d) Amendment of the Patent-
        (1) IN GENERAL- During an inter partes review instituted under this chapter, the patent owner may file 1 motion to amend the patent in 1 or more of the following ways:
        (A) Cancel any challenged patent claim.
        (B) For each challenged claim, propose a reasonable number of substitute claims.

        Surely, Anon, this does not mean “but the motion to amend will only be granted if by whim of the board – your motion must also include a winning argument” – over all known or unknown substantive challenges to the patentability of the claim (as the due process required to determine whether one could prevail on the amended claims is not of record as of the date of the motion amend the claims). Talk about your Queen of Harts type court. The fact is that procedural due process can effect substantive due process – and PTO has never had the authority to usurp substantive due process under the guise of procedural rules (procedural due process) – even as pto purports to implement – procedural implementing regulations. So in practice the right to 1 motion to amend as implemented by pto – is in fact a merits determination – which is a substantive determination – protected by due process. In other words, you can’t have a rule that provisions a right to amend the claims – on whether or not you might ultimately prevail. Anyways, you get my drift.

        1. Watch your logical fallacy there:

          The fact is that procedural due process can effect substantive due process

          Does NOT mean

          The fact is that procedural due process DOES effect substantive due process.

          You have jumped and assumed the conclusion that needs to be proven (and which by the direct words of Congress is shown to be the opposite): you have assumed that there is IN FACT a right to amend when there is NO such right.

          All that Congress has provided is the procedural right to file a motion.

          That’s it.

          There is NO right written for applicants to HAVE an amendment. There is NO criteria presented by Congress for which any motion of an amendment MUST be accepted. The “substance” is only one of the beginning of the process – the right to make a motion. Great. Make your motion. But – as I pointed out – the law does NOT require the motion to be granted.

          There are constraints on what must be in place to even make a motion – and you are confusing yourself as to thinking that these are requirements for a motion to be allowed, as opposed to being merely for a motion to be made. There simply is NO legal bar that says a motion MUST BE granted.

          Read the law a bit more closely my friend. It simply is not what you think it is.

          1. No, I agree with what you are saying here. There is a procedural Right to file a motion to amend. And silence as to how that is governed. If the subset rule was – and that motion would be granted if – early and streamlines the case. Fine. But PTO has said – amended entered only if – you demonstrate you will prevail on all know and unknown potential issues. That’s a merits determination in the guise of a procedural right.

            1. in the guise of

              Except it is not.

              You still are trying to extend one thing (the mere right to ask) with something else (somehow a seemingly right to have an amendment “if”).

              The point being here that – as I have said – since the amendment is NOT “of right” is is “of whim.”

              The amendment BEING “substantive” simply does not enter the equation under focus.

                1. Do you see a difference?

                  I thought that you had already agreed that the law merely provided the ability to ask for an amendment… Have you changed your mind on that?

        2. …and to put it another way, a “winning argument” may be necessary, but is not necessarily sufficient.

          Why? Because the law simply is not written that way.

          The AIA is an abomination – and this is yet another manner of that abomination.

        3. In other words, you can’t have a rule that provisions a right to amend the claims

          LOL – that’s just it – you DO NOT have a right to amend the claims.

  2. Can somebody (Ned?) correct me if what I write below is wrong:

    The patent has 21 claims and the amendments are to issued independent claims 1 and 20. The text of the amendments is drawn from issued dependent Claims 10, 11 and 12. These three claims depend from issued Claim 7. Claim 7 requires two front wheels and two rear wheels.

    Claim 10 requires each pair of Claim 7’s wheels to have an axle. Claim 11 adds a discharge conduit that is rear of the front axle and is upwardly angled relative to the said discharge conduit (huh?). Claim 12 adds the further requirement that the water jet discharge intersects with the front axle.

    There is no disclosure of any interaction between the discharge jet and the wheels, so no disclosure of the use of the wheels as rudders.

    When the USPTO indicated that Claims 10, 11 and 12 “contain” patentable matter, that is not to say that the claims consist of patentable matter, but only that they are not without some potential (worth exploring) for eventual allowance.

    1. You raise an interesting point here Max that the functional relationships between the Jets and the wheels was not disclosed and yet it possibly was the reason that the whole apparatus worked well.

      But it seems to me that if the particular combination is not shown in the prior art, why is it not patentable if it in fact provides new functionality even if that new functionality is not understood at the time the patent application is drafted and is therefore not described?

      1. Ned, where I come from, you get protection for what you teach. If there is one jet half way across the width of the trolley, and if the trolley has a wheel at each of its four corners, where do you get the idea from, that the jet interacts with the wheels? Does the exhaust gas stream in a car (for example) meaningfully interact with any of the wheels?

        Now I daresay using the wheels not only for steering but also as rudders might deliver neat effects. But if it ain’t mentioned, in the application as filed, why should the Applicant get 20 years of exclusive rights for something he didn’t appreciate and didn’t teach, in the application as filed? Where is the quid pro quo?

        1. By the way, how fast does this thing motor over the bottom of the pool? Fast enough for rudders to function, meaningfully? Or must the jet hit the wheel? Is that what the patent claims?

          1. Max, all good points. But if the structure is both new and provides new functionality, why does one have to describe why it works in the specification? I know a lots of inventors try to figure out how invention works when they do not really know why, and they make mistakes almost every time they do not fully understand something, especially if they put their wrong theory into the claims themselves.

            1. But Ned, the structure as claimed provided no new functionality, because the claim failed to specify that the jet had to flow over a wheel.

              Now if the spec taught the joys of flowing over the wheel, you might be able to construe the claim as delivering that new functionality.

              But if the spec never gets round to mentioning the functionality you are now conjuring up to save the patent, why should a claim whose validity is assessed as of the filing date of the application be saved by the making of the invention much later, during prosecution or after grant?

              1. Max, here are the added elements:

                “Aqua moved to substitute new claims 22–24, which amended claims 1, 8, and 20 to additionally require that (1) the jet creates a downward vector force rear of the front wheels (the “vector limitation”), and (2) the wheels control the directional movement of the cleaner (the “directional movement limitation”). Substitute claim 23 also added that the cleaner has four wheels (the “four wheel limitation”), and
                substitute claim 24 added that the jet shoots filtered
                water (the “filtered water limitation”).”

                Now, the jet must be directed up to provide a downward force. The location is specified, somewhat; it has to be to the rear of the front wheels. The wheels control directional movement — what this means it unstated and, to me, completely ambiguous and indefinite. Do the wheels turn. How? What makes them turn if they do? Or do they resist movement? One is left to guess.

                1. anon, it was a given that the added subject matter was from claims 10-12 that the PTO twice found to contain patentable subject matter.

                2. Thanks Ned – but NOT every instance is so, now is it? As others have attempted to engage you (your silence screams loudly), the point is that claim amendments MAY by more than the straight forward “form” change of making a dependent claim into an independent claim with NO change in actual scope, or anything else not already examined.

                  Do you need post numbers of the several people who have attempted to get you to address this difference?

    1. The actual holding is both broader and narrower than that, I believe (but it’s a non-precedential case).

      I’d put it this way: a claim that recites “automatically” (i.e., computer-aided) collecting measurements obtained using prior art measurement technol0gy (e.g., “heat sensors” or “GPS”), and then “automatically” comparing those measurements to predetermined standards to “automatically” determine the “state” of the measured phenomenon (e.g., “qualifying” or “not qualifying”) is ineligible.

      The result has nothing to do with “oil wells”, really. The claims could have been drawn to “automatically” determining the “state” of an automobile (“speeding” or “not speeding”) or the “state” of a litter box (“full” or “empty”).

      1. MM, actually this holding is not unlike Flook in that a measurement, a calculation, and a result of the calculation that is no more than that is not rendered eligible simply by reciting that it be done on a computer.

      1. Footnote one: systems with real generic hardware are “Gisted” away

        Shall we take a look at what was actually written in that footnote? Yes, we shall!

        [The patentee] made no attempt in either its briefs or at oral argument to distinguish [its other] claims from representative claim 1, other than to state that the systems (reciting generic hardware) are different from the methods. Those arguments are insufficient to demonstrate eligibility under § 101.

        Yes, folks, it’s true: the recitation of generic hardware will not rescue a pile of ineligible crxp. Golly gee whiz what a sh0cker.

        1. You kind of missed the point – actual hardware (genetic or not) is made to be “Abstract”

          It’s a neat trick to make one of the statutory categories simply disappear like that, eh?

          1. actual hardware (genetic or not) is made to be “Abstract”

            No, that’s not what’s happening at all.

            Either you lack the intelligence to understand the law in this area, or you are dissembling. There’s really no alternative at this point for your inability to understand.

            Am I going to walk you through the analysis again for the thousandth time, i.e., the basic logic I explained to you before Mayo and Alice, the basic logic that’s never ever going to go away?

            Nope. You’re on your own. Maybe you can create a “newbie” Dierhb0t s0ckpuppet who pretends to be new to all this. Who knows, I might get inspired.

            1. No, that’s not what’s happening at all.

              That’s exactly what is happening – the dissembling is on the other side of the “argument.”

              As typical for the number one meme of Malcolm: AccuseOthersOfThatWhichMalcolmDoes

  3. From Aqua’s brief:

    Rather than address these limitations, the PTAB issued a conclusory, one sentence statement that “we find that with respect to the additional limitations recited in the substitute claims, there are a finite number of predictable solutions and that the subject matter of the substitute claims is not the product of innovation, but of ordinary skill and common sense.” A51-52. The PTAB cited no evidence to support this conclusion—for instance, it cited no testimony from a person of ordinary skill in the art.

    Shall we take a peek at these “additional limitations” so we can see how oh-very-serious this dispute really is? Yes, we shall! (referring back to the CAFC’s earlier decision):

    (2) the wheels control the directional movement of the cleaner (the “directional movement limitation”).

    Wheels for controlling direction! Wowee zowee! That’s unheard of.

    the cleaner has four wheels (the “four wheel limitation”)

    Four wheels! My goodness, that’s simply unheard of. Nobody uses four wheels for controlling direction. Everybody knows all you need is one, plus good balance. Adding three more is just a total waste.

    substitute claim 24 added that the jet shoots filtered water

    Totally different from shooting unfiltered water!! And you just know that “filtered” is defined in the specification, right? Because it’s so s00per d00per important.

    Well, maybe Aqua had some really awesome arguments (but probably not better than these) and they presented them properly to the PTAB? Right? Right? Oops:

    [N]one of [Aqua’s] arguments appeared in the portion of the motion to amend that sought to explain why the “Substitute Claims Are Not Obvious In View of Henkin and Myers.”

    They plainly needed more than 15 pages to kick up sufficient dust to blind the PTAB! It’s all sooooooo unfair. Boo hoo hoo hoo.

    1. Thanks for that, MM. Paul Cole is forever urging that one ought to hold back on commenting till one has read up on the case. You make his case for him. For these “additional limitations” immediately strike me as prima facie ridiculous. No wonder then, the court’s requirement, to back them up with argument.

    2. MM, interesting that one would add four wheels to control directional movement in the water.

      Totally obvious, frivolous, and ridiculous. That is almost like adding keel to a car to assist in cornering. Totally obvious, frivolous and ridiculous.

      1. The larger point being that — absent additional limitations relating specifically to the wheels in question — adding any number of wheels to any apparatus that moves across a solid surface at some point is prima facie obvious in view of common sense and a a zillion references known to all non-comatose humans, including the world’s densest patent attorneys.

        In a sane, functioning patent system, to propose such a limitation as “our device has four wheels!” and then cry about “lack of evidence in the cited art” is akin to announcing that (1) you were born yesterday or (2) that you’re an unethical hack who will do and say anything if there’s a one in a billion chance that you’ll get your pot of g0ld.

      2. Ned, does the device float? I was under the impression it travelled over the floor, like any other land-based wheeled vehicle.

        1. Max, I am not sure they argued this or not, putting wheels in water makes them act like rudders regardless. Thus, using a plurality of balls for translocation would not be an equivalent.

          The prior art disclosed 3 wheels, with the trailing wheel pivotally mounted to permit random movement. Thus the four wheel limitation combined with the requirement that each pair, front and back, be axially mounted, does seem to define over the prior art of record.

          1. The prior art disclosed 3 wheels, with the trailing wheel pivotally mounted to permit random movement. Thus the four wheel limitation combined with the requirement that each pair, front and back, be axially mounted, does seem to define over the prior art of record.

            Pretty sure “the prior art” — the kind that you can stick your head out the window and see — taught the use of both three wheels, four wheels, six wheels, eight wheels, ten wheels, twelve wheels, fourteen wheels, sixteen wheels, eighteen wheels and, heck, any number of paris of wheels. This isn’t about anticipation. It’s about obviousness and common sense. Note also that the use of four axially mounted wheels also “permits random movement”. Now, I haven’t read the specification of the patent at issue here but the odds that the spec teaches some problem with 3 wheels that’s solved by using four wheels is pretty close to zero. Happy to be wrong about that!

            putting wheels in water makes them act like rudders regardless.

            Did these pool cleaner dudes discover that? Nope.

            using a plurality of balls for translocation would not be an equivalent.

            Using a plurality of rotted sausages would not be an equivalent either. What does either proposition have to do with this case? Answer: nothing.

          2. Ned I’m not sure what you mean by the expression to define “over” the art of record. Novel? It’s always easy to make mere novelty. But that’s not enough, is it?

            Inventors always labour under the unfortunate misapprehension, that the more they have invested in their application for protection, the more they ought to get some for their money. It seems to me that in the USA some patent attorneys also suffer from this misapprehension. The trouble with it is, it breeds contempt for those whose job it is, to promote the progress by confining the grant of exclusive rights to subject matter which is inventive ie not obvious. Otherwise, patents are obstacles in the road of progress and impede it rather than promote it. Ob Via is Latin for “lying in the road”. Two rudders instead of one? Four wheels on the trolley instead of three? Technical effects invented on the fly, long after the patent application was filed? It’s not very convincing to me yet Ned.

            The pre-1978 UK way had much to commend it. The Office saw to it, that no claim issued that included within its ambit something old or lacking in clarity. Obviousness was left to the courts.

            At least then inventors could understand that not everything which issues will stand up in court.

            You probably have no idea how much that pre-1978 system promoted the progress of thoughtful patent drafting.

      3. Ned, most boats, especially those with keels, are not designed to travel by being pushed down against the bottom.

        1. Paul, but consider that the main thrust vector of wheels underwater does not have to do with their traction, but with their rudder-likeness.

  4. From today’s decision in ScriptPro v. Innovation Associates (page 4, footnote 1):

    After ScriptPro filed suit, Innovation petitioned
    for, and the United States Patent and Trademark Office
    (“PTO”) instituted, inter partes reexamination. During [inter partes] reexamination ScriptPro amended the asserted claims, adding language to claims 1 and 2, and rewriting claim 4 into independent format. Claim 8 was not amended. The PTO confirmed the asserted claims as amended.

    Gee, maybe some claims aren’t worth granting but others are. Who could have imagined?

    1. Now that this case has its own thread, maybe you will be more clear about what point you were trying to make here.

  5. Taking a step back, since amendments in an IPR are NOT of right, is the refusal of ANY amendment tied to purported legal rationales (say as here one of burdens), or can the Office simply refuse to grant an amendment by any “rule” that they themselves may enact (or by no “rule” whatsoever)…?

    In other words, since NOT “of right,” then (necessarily) “of whim”….

    1. “anon” can the Office simply refuse to grant an amendment by any “rule” that they themselves may enact (or by no “rule” whatsoever)…

      By any rule? Or by “no rule”?

      Of course not.

      But that’s not even close to what the PTO is doing here it’s not entirely clear why you raise the question.

      IPRs aren’t going anywhere, by the way. It’s kinda funny to see the entitled eternal whining class getting worked up about this (hilarious comments down below!) but, hey, it wouldn’t be the first time the CAFC went overboard with its coddling of patentees.

      Just get back to basics, folks: learn about the prior art, learn to write claims that distinguish your alleged “innovation” from the prior art, learn to claim what you actually “innovated” instead of claiming the world, put support for all aspects of your innovation in your spec, and define your terms. If you actually have an “innovation” that’s patent-worthy and eligible for patenting, you’re going to be just fine.

      1. Of course not.

        A conclusory statement is most unhelpful. Maybe you want to add something (anything) to that…?

        But that’s not even close to what the PTO is doing here it’s not entirely clear why you raise the question

        You really do have a difficult time with independent critical thinking, don’t you?

        What part of “if not by right, then by whim” are you struggling with?

    2. Anon, the statute says that the new claims cannot add subject matter. The statute also says that the petitioner has the burden of proof. So I think that the patent office can require a demonstration that the claims do not add new matter and have written description support, but if the claims do not add new matter and have written description support, the patent office must allow them unless the petitioner demonstrates their unpatentability with evidence and arguments, to which of course, the patent owner might respond.

      But what happened in the patent office with the rules enacted by the patent office is all but to deny the patent owner a right to amend even when the petitioner does not object, the claims add no new matter and are supported in the specification. This is not as if broader claims are being added.

      What the patent office wants to do is effectively take sides. They are not simply acting as judges in a dispute between a petitioner and a patent owner. They are becoming advocates against the patent owner. Anybody who is actually been an IPR knows this. The PTAB is anything but a neutral forum.

      1. I fully recognize the “no new matter” requirement, and quite frankly, there is NO amendment of right.

        Nonetheless, one simply cannot expect an amendment to simply be rubber stamped without true examination (and that examination by the Office – and NOT by a petitioner).

        It is simply NOT enough to pass the art of record, and to have 112 support (and not add new matter), if the amendment covers items that were not covered in the prior examination.

        The problem is that the IPR process is infirm to begin with, and is simply going to continue to become more infirm with additional case law piling on.

        1. anon, I think you are missing the point here that the claimed subject matter has already been examined and to be held patentable by both the ex parte examiner and by the PTAB.

    1. Anon, thanks for that. Yes we are familiar with that case. We to believe that the PTAB improperly shifted the burden of proof to us, because our position all along was that the other side had not demonstrated a prima facie case and it was improper for us to be required to demonstrate patentability.

      1. our position all along was that the other side had not demonstrated a prima facie case

        I don’t recall this failure being presented as an issue for the Supreme Court to review. Am I misremembering something?

        1. MM, we had three issues on appeal to the Federal Circuit, lost them all. But, if we win on our petition, the other rulings are effectively vacated.

            1. …and brush up ik your basics of property (the sticks in a bundle concept) and your takings understanding (neither full title,possession, or total taking required)

  6. It seems unfair to deny amendments of the claims to cover patentable subject matter. If the examiner had done his/her job in the first place the claims would have been narrowed so they covered the patentable subject matter. It is the attorney’s job to obtain the broadest possible protection based on the knowledge of the attorney and the applicant. It is the examiner’s job to do a proper search and reject claims that are to broad . If new art detrimental to patentability is later discovered the applicant should have the opportunity to narrow the claims as appropriate. If the PTAB has a problem with the scope of the claims perhaps a mechanism should be established to revert to an ex parte reexam.

    1. Michael, I agree with you that

      “It seems unfair to deny amendments of the claims to cover patentable subject matter.”

      but that’s not the issue, is it? As I understand it, the issue is whether it is OK to require the petitioner to explain what it is about the solicited amendment, that transforms the claim in suit into a claim that is no longer invalid.

      1. I do not think that the issue is whether the “claim in suit” is transformed.

        Any claim amendment changes from the “claim in suit” to something NOT in suit.

        This is different than that (and certainly bringing “equity” into the picture broaches whether or not the patentee is left with something (perhaps less, but at least something) or left with nothing.

    2. Michael Ram, have you ever heard of dependent claims?

      What happened here was, if I understand the facts correctly, is a travesty. The PTAB had already found that the dependent claims 10-12 contained patentable subject matter, and then denied a motion to amend to add into the independent claims the subject matter of claims 10-12. On its face, what the PTAB did here has to be deemed outrageous – a clear abuse of discretion.

      Which is why I think the Federal Circuit is reviewing the habit of the patent office to placate their “stakeholders” by denying due process to patent owners. And who are these stakeholders but lobbyists who contribute heavily to political campaigns to buy influence?

      What we are seeing here is crony capitalism at its worst.

      1. Ned, Of course I have. I am addressing the bigger issue of the PTAB denying the patentee the ability to correct the claims of the patent by eliminating standard options open to patentees (ex parte reexam, reissue) solely because there is a third party challenge to the patent. If a patentee discovers art not previously considered, the reexam/reissue route is open. If the patent is in a litigation reexam or reissue is a common option. Only with an IPR is the patentees options to correct denied

        1. Michael, I agree with you. If the claims are supported and only narrow, and the petitioner does not object, I think the default rule should be to allow the proposed new claims without further ado.

          What happens instead is that the patent office becomes an advocate. It sits like an examiner who was has issued a rejection, when clearly the statute requires the PTAB to decide the patentability of a claim based upon evidence and argument produced by the petitioner.

          1. Even “only narrow” – but previously unexamined – claims need to be promptly examined (and that is by the Office and not the petitioner) if the first time that they appear is at IPR time.

  7. I think we need to strengthen the presumption of validity and avoid all these avenues for amending and challenging after issuance. Creating more opportunities for lawyers to corrupt the integrity of the system will only do just that. To balance the presumption of validity, put more burden on the petitioner to show why an IPR is necessary. Create more penalties for bad faith lawyering.

    1. It can be said that the AIA is [terminally]** flawed in that it – while not touching the property aspect of what a granted patent is (and one of those sticks in the bundle of property right is the presumption of validity) – at the same time “authorizes” a taking of that stick from the bundle of property rights that a granted patent
      — said taking occurring at the initiation decision point,
      — AND said taking being done by a member of the executive branch (read in politics),
      –AND said taking occurring without recompense of any kind,
      –AND said taking occurring without any shot of judicial review of that initiation decision.

      There is NO amount of “interpreting” from the bench that can save this critical fault. So given that this particular law also explicitly rejected a separability clause (which prevents the courts from creating one in any attempt at “saving” that they may try), we really are faced with an inevitable crises of one sort or of another.

      ** the preferred term of
      f
      a
      t
      a
      l
      l
      y
      is blocked by the filter.

    2. Changing the burden of proof in an IPR would require Congressional action to change that part of the IPR statute. Not just judicially attacking specific PTO rules and practices under that statute for claim amendments, as here.

      As fro “penalties for bad faith lawyering” the IPR system does contain sanctions authority, but I have not heard yet of anyone appealing PTAB failures to apply sanctions in IPRs?

  8. This is a good subject for en banc [with invited amicus briefs] consideration. But proposed changes will raise other issues that need to be considered.
    If they put the burden on the IPR Petitioner to invalidate amended claims that are substantively different from any initial IPR challenged claims, then for due process and protection of the public they also need to allow the petitioner to do a supplemental search and to introduce additional prior art and declarations needed to rebut the alleged novelty of claims with new claim elements. Otherwise this would not even be a valid inter partes validity trial. The PTAB is not a prior art searching facility! I hope this point gets made in amicus briefs.

    N.B. While the difficulty in getting amendments entered in an IPR is indeed a highly contentious topics, it is highly overrated as a factor in IPR outcomes. The total of only 106 IPRs having attempted amendments denied is obviously only a small fraction of the thousands of IPRs. Furthermore, some of those proposed amendments were belatedly presented far too late in the proceedings, or were legally defective, like Cuozzo’s attempted claim broadening, or lacked 112 support. [While 112 or new matter cannot be raised in an IPR against original claims cannnot it beraised against amended claims?] Furthermore, approximately 80% of IPRs are tied to parallel patent litigation. Even if amended claims are eventually allowed in the IPR, by that time those amended claims are not going to be introduceable in the parallel litigation if that litigation has been going on for some time. Also they will be limited in application by the “intervening rights” statute in that and all future litigation.

    1. This is a good subject for en banc [with invited amicus briefs] consideration. But proposed changes will raise other issues that need to be considered.

      Is it? Or is it biting off far more than the separation of powers permits? Just how much “legislating from the bench are you expecting here?

      If they put the burden on the IPR Petitioner to invalidate amended claims that are substantively different from any initial IPR challenged claims, then for due process and protection of the public they also need to allow the petitioner to do a supplemental search and to introduce additional prior art and declarations needed to rebut the alleged novelty of claims with new claim elements.

      That sounds like substantially more legislation than is found in ANY interpretation of the America Invents Act.

      Otherwise this would not even be a valid inter partes validity trial. The PTAB is not a prior art searching facility! I hope this point gets made in amicus briefs.

      Not sure that you can reach your “saving addition” in the first place. And if the law IS “interpreted” so as to maintain the burden on the one challenging the patent (even for newly claimed material), AND the AIA is not sufficient to support such action, AND the courts cannot prescribe the necessary legislation to create that support in the first instance, what then, Mr. Morgan?

      1. In trying so hard just to be saying something negative, you are inconsistent with your own valid point below at 1.1.1

        1. Nonsense Paul.

          There is no inconsistency.

          I am merely taking your statements here to the next logical level.

          If you see inconsistency, it is only in the path that your are on.

          Instead of trying to sh00t the messenger, maybe you want to pay better attention to the message.

    2. As Max has pointed out, Paul, if the claim amendments are no more than incorporating into parent claims the subject matter of patented dependent claims, the presumption should be that they are patentable and they should be allowed without even comment by the PTAB or by the petitioner unless the petitioner addressed these dependent claims in the petition, in which case, there evidence is of record and it should not be allowed to be supplemented.

      Now if the added amendments are taken from the specification and do not appear independent claims, then I would agree that what you say might be arguably permitted because, it seems, the purpose of these claims at a from the specification is to provide a basis for patentability while maintaining a basis for infringement.

      1. Ned, “claim amendments .. no more than incorporating into parent claims the subject matter of patented dependent claims” is not the subject of this IPR decision on en banc appeal here. Furthermore, that is the same as a cancellation or disclaimer of the parent claim while leaving the dependent claim, which would normally be PTO-unobjectionable ASSUMING that dependent claim was a part of the IPR Petition and not a dependent claim that was never in issue and never considered before.

        1. Paul, they technically added into each independent claims the subject matter of 3 dependent claims that had all survived the institution decision. Why are you suggesting that this is not the case? In fact, this fact situation is, I think, critical to the reason the Feds took this case en banc because the PTAB is already on record that the claimed subject matter is patentable.

  9. Max, did you know that one can sue on dependent claims in the United States without suing on the parent claim?

    What apparently happened in this case, though, is that the applicant had taken the elements of three dependent claims, 10-12, and added the subject matter of each to claims 1, 8 and 20. The significance of this is that the PTAB had previously decided not to institute with respect to these dependent claims apparently finding that the petition did not present an adequate case for their unpatentability. One would therefore suspect, without more, that the PTAB should have found that the “amended claims” would have defined over the prior art simply to be consistent with their earlier non-institution decision.

    But that is not what happened here. After holding the independent claims at issue invalid over the references, the PTAB all but summarily denied that the petitioner had proven patentability of this proposed “amended claims.”

    Rather than address these limitations, the PTAB issued a conclusory, one sentence statement that “we find that with respect to the additional limitations recited in the substitute claims, there are a finite number of predictable solutions and that the subject matter of the substitute claims is not the product of innovation, but of ordinary skill and common sense.” A51-52. The PTAB cited no evidence to support this conclusion—for instance, it cited no testimony from a person of ordinary skill in the art. Id. It is Aqua’s contention that this one-sentence, ipsis dixit dismissal of all the remaining limitations in the claims was improper and not in keeping with this Court’s obviousness jurisprudence or the record-making requirements of the APA.

    In other words, the PTAB sprinkled the magic dust of KSR over the claims it held unpatentable, using rote incantation to substitute for both evidence and reasoned explanation. Such is the respect the PTAB has for the rights of patent owners.

    1. Thanks Ned. Your words have reminded me of how things have changed at the EPO, in recent years. It never used to be, but these days it is incumbent on Applicants to explain in detail why their amended claims do meet all the patentability requirements of the EPC.

      I might suspect that there is a good deal of collusion going on, between the respective government servants, that is to say, the denizens of the USPTO and the citizens of EPONIA, about how to reduce backlog and pendency, and get files moving, off one’s desk and on to somebody else’s. No wonder Eponia’s President Battistelli is so pleased with himself, these days.

      1. ?

        You might have to “fill in” and supplement the snide comment for those not following the accusations that President Battistelli is wrecking the examination function of the EPO (for the benefit of the Big Corp mass filers there).

        1. All I’m saying is that the two Offices increasingly seem to be borrowing tools from each other’s toolbox. Thus:

          Hey Benny, how do you deal with this issue?

          Hey Michelle, can you give us any tips, how to manage this unruly Applicant behaviour?

          Every time the USPTO adopts one of Benny’s suggestions, he smiles. He’s looking forward to the next meeting of the Heads of the G5.

          The G5 are the Patent Offices of USA, China, Japan, Korea (south) and Europe.

          That’s all I’m suggesting.

          1. All I’m saying is that

            Your way of saying it is more than just what you protest to be saying.

            Or are you simply unaware of your own snideness?

            (that would be even worse than being snide for a reason)

        1. Amongst the heads, that of the EPO’s Head of State Benoit Battistorytelli (the Pocket Napoleon Bonaparte) might well be closest to the ground.

          Never mind though. One can compensate. Many over here are in no doubt that he enjoys possession of the biggest ego.

          Perhaps we could get The Donald to judge?

          1. Obviously, Max, there is longing in Europe for somebody with the gumption of The Donald who might actually say to the pseudo-Napoleon Bonaparte that he is “fired.”

            1. Wonderful Ned. Your comment had me literally laughing out loud.

              But Benny’s employer is a committee with 38 timid members, each the representative of an EPC Member State, a shareholder, if you will. Benny keeps these little mice well fed, with attractive dividend income (no audit) and so none of them feels like calling him out.

              The situation ceases to be funny, once Benny starts to ignore the Rule of Law. Think United Nations, or any other multi-national organisation set up by national governments. The problem is not confined to Europe, but Europe should set a better example.

              The expression “Belling the Cat” comes to mind.

          2. Speaking of European legends, I was inspired to read more on Horatio Nelson after your description of what happened when he raised his glass to his blind eye. Turns out that that piece of his legend came from the battle of Copenhagen when his effete admiral ordered him to retreat at the moment Nelson was winning.

            But I think Nelson greatest display of courage was at the 1797 battle of Cape St. Vincent where Nelson, then a Commodore, turned about from the end of the British line, put himself in front of a Spanish fleet to stop it from joining with its sister fleet, and, when his ship had been pounded into immobility by the combined firepower of 4 to 5 major ships of the line, proceeded to capture 2 of them, taking the second to be entangled by boarding the first, crossing it to attack and take the second, and then returning to take the first. This maneuver has become known as “Nelson’s patent bridge for boarding First Rates.”
            link to wikigallery.org

      2. Things may have changed since 2013-2015, but IPRs were then little more than show trials unless there were “stakeholders” on both sides, you known, the kind held by Stalin and der Fuhrer?

  10. For one immersed in inter partes proceedings at the EPO, a fascinating question.

    Why that then?

    Because the EPO distinguishes between an amendment to an independent claim that does no more than fold into it the text of a dependent claim, and an amendment that imports into the main claim text from somewhere else. The first type of amendment is immune from attacks on its clarity (definite-ness) while the latter type gets subjected to a full enquiry.

    It seems to me beyond argument, that dependent claims are meant as fallback positions and that i) to deny the patent owner an amendment into one of those fallback positions is not equitable and ii) to start all over again, scrutinising if the amended claim is definite is inequitable and militates against efficiency, in that it gums up the inter partes proceedings for no good reason.

    Conversely, to allow a patent owner free rein to fish recovery text out of the specification will do nothing to improve drafting standards and actively works against legal certainty for business in need of a reliable FtO opinion. Why bother to write clear claims and develop solid fallback positions at the filing date, when you can leave it till later, without risk or penalty?

    So I wonder how these questions will be addressed. With an eye to procedural efficiency, or purely on theoretical legal grounds.

    1. You are conflating your sovereigns again MaxDrei.

      This appears part of your sovereign ‘s tendency for “exact language” and your own “prescription for eyeglasses” of “freedom to operate” and neglects the fact that here in this sovereign the emphasis on equity is more on what the inventor has invented and shared (the quid pro quo NOT limited per se to the claims). Yes, the claims are the most important part and yes, claim drafting is important, but here we use the entire file wrapper and here we even allow completely broader claims as a matter of right within the first two years after issue.

      So much more here that is different than the picture that you paint with only the “EPO glasses” prescription.

      1. (to be clear, this is NOT to say that any claim amendment in an IPR proceeding should get a “free pass” to being granted – any such claim still needs a proper examination on the merits – but examination is an Office function, and “proving a negative” and placing that burden on the applicant and ONLY using the art of record does not accomplish this “examination on the merits” anyway – in this respect, the government’s brief for denial of en banc, while raising some good points misses a critical point)

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