Law360, New York (March 13, 2014, 1:08 PM ET) -- The Idle Free
decision1 denied the patent owner's motion to amend
claims on the ground that the patent owner had not proven the
patentability of the claims over the prior art. Remarkably, the
decision makes no reference to the petitioner's proofs on the
issue, but rather denies the motion solely on the basis of
perceived deficiencies in the patent owner's showing of
patentability. Under Idle Free, not only is the burden on the
patent owner to prove patentability of its amended claims, but
"general patentability over prior art" must be
demonstrated.
The Patent Trial and Appeal Board routinely cites to Idle Free
as setting forth the standard for a motion to amend in an inter
partes review. Many believe that the requirements for a motion to
amend as articulated in Idle Free are extreme and very difficult,
if not impossible, to satisfy. At present, the author is unaware of
any decision by the board granting a motion to
