Claims Can Be Amended In IPR – Really!

Riverbed Technology, Inc. v. Silver Peak Systems, Inc.

In just the second instance since America Invents Act (AIA) / post-grant reviews became available, the Patent Trial and Appeal Board (PTAB or Board) allowed a patent owner to substitute new claims in its patents in the course of an inter partes review (IPR) proceeding.  Riverbed Technology, Inc. v. Silver Peak Systems, Inc., Case IPR 13-00402 and 00403 (PTAB, Dec. 30, 2014) (Arbes, APJ).

The petitioner filed petitions for inter partes review of the claims of two of the patent owner's patents.  Rather than file a Patent Owner Response for each petition, the patent owner filed a Motion to Amend seeking to cancel all challenged claims and replace them with six new claims in each patent.  The Board found that the patent owner met its burden of proof to demonstrate, by a preponderance of the evidence, the patentability of the proposed substitute claims for two of the substitute claims for each patent.