Patents - April 03, 2016

Inter partes review 3: Substitute claims

The Patent Trial and Appeal Board (PTAB) issued final written decisions in two inter partes review proceedings that cancelled the challenged claims of U.S. patents 7,057,026 and 8,158,346 and denied entry of substitute claims. The United States Court of Appeals for the Federal Circuit affirmed the decisions in Illumina Cambridge Ltd. v. Intelligent Bio-Systems, Inc., ___ Fed. Appx. ___, 2016 WL 363498 (Fed. Cir. January 29, 2016) (non-precedential). The Illumina case illustrates how the ability of the patent owner to offer claims to substitute for the challenged claims is limited.

The statute allows the patent owner to file only one motion as of right to cancel challenged claims and propose a “reasonable number” of substitute claims for each challenged claim.  35 U.S.C. § 316(d)(1).  Additional motions are permitted at the joint request of the patent owner and the patent challenger, such as in a settlement.  35 U.S.C. § 316(d)(2).

Pursuant to authorization granted by 35 U.S.C. §§ 316(a)(4) and (9), the U.S. Patent and Trademark Office issued regulation 37 C.F.R. § 42.20 concerning procedures before the PTAB.  Subsection (a) requires that “[r]elief, other than a petition requesting the institution of a trial, must be requested in the form of a motion” and subsection (c) requires “[t]he moving party has the burden of proof to establish that it is entitled to the requested relief.”

The Illumina court observed that “[f]or a motion to amend during an inter partes review proceeding, the patentee bears the burden of showing that its proposed substitute claims are patentable over the prior art of record.”  It cited its recent cases concerning the regulation discussed above, namely, Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1306-08 (Fed. Cir. 2015) and Prolitec, Inc. v. ScentAir Techs., Inc., 807 F.3d 1353, 1363-64 (Fed. Cir. 2015).

Thus, in an inter partes review the patent owner effectively has only one chance to propose substitute claims.  The patent owner then bears the burden of proving that the substitute claims are patentable over the art of record.  This is the reverse of the normal procedure for examination of patent applications, in which the examiner has the burden of showing that the proposed claims are unpatentable.