PTAB Grants First Motion To Amend In An IPR

Until recently, the PTAB has consistently denied motions to amend claims in IPR proceedings. Under 37 C.F.R. § 42.121 (a), a patent owner can file one motion to amend with a single amended or new claim to replace each withdrawn old claim in an IPR with the prior approval of the Board. However, there have been substantial  hurdles for patent owners. Patent owners cannot broaden claim scope, must establish written description support, and must decisively demonstrate patentability of each claim over the general state of the prior art.

It is the third requirement that is most problematic. In Idle Free Sys., Inc. v. Bergstrom, Inc., IPR2012-00027 (PTAB January 7, 2014) (Paper 66), the Board stated that it is insufficient to merely distinguish the proposed amended claims from the prior art applied to the original patent claims. Slip. Op. at 33. Noting that the amended claims would be directly added to the patent rather than examined further (if the Motion was granted), the