Heightened Burden On Patentee Amending Claims At PTAB

Over the last year, the PTAB has issued a number of orders providing guidance on the procedures for amending claims in IPRs, PGRs, and CBMs. In its latest final written decision, Idle Free Systems, Inc. v. Bergstorm Inc., IPR2012-00027, Paper 77 (January 7, 2014), the Board discussed at length the burden placed on a patentee seeking to amend its challenged claims.

First, the Board distinguished post-grant proceedings from pre-grant examination and post-grant reexamination. Unlike those examination contexts, proposed amendments or substitute claims are not entered and then subjected to a thorough examination. Rather, during post-grant proceedings, the proposed amended or substitute claims are "added directly to the patent, without examination, if the patent owner's motion to amend claims is granted." To that end, the Board clarified that the burden is on the patentee to demonstrate that the amended or substitute claims are patentable over the prior art in general,