A Kinder, Gentler PTAB Allows Claim Amendments

REG Synthetic Fuels LLC v. Neste Oil Oyj

In a final written decision, the Patent Trial and Appeal Board (PTAB or Board) agreed with the petitioner that the original challenged claims were unpatentable but at the same time granted the patent owner's motion to amend, finding that the proposed substitute claims were patentable. This decision may portend a relaxation of the practical requirements for amending claims in IPR proceedings. REG Synthetic Fuels LLC v. Neste Oil Oyj, Case IPR 14-00192 (PTAB, June 25, 2015) (Crumbley, APJ.).

REG's inter partes review (IPR) petition challenged Neste Oil's patent directed to a process of manufacturing biodiesel fuel. GEN stepped into the shoes of its predecessor, REG, and maintained the challenge against the Neste patent. The patented two-step process included a first step in which a feed stream of biological origin is hydrodeoxygenated and then a second step in which the feed stream is isomerized. According to the patent,