An Equivalent to Amendments During IPR Proceedings

Some folks have been grumbling that amendments are not being allowed in PTAB IPR proceedings. However, when you dig into the statistics, there is evidence suggesting that the some Patent Owners have achieved the equivalent of an amendment without the formal burden of proving patentability (required for a formal amendment) and some others may have missed the opportunity to obtain such an equivalent.

First, it should be recognized that—in many cases—an amendment has not been necessary, because all claims survived the IPR. Most significantly, the PTAB has refused to review any patent claims in approximately 20% of the IPR cases reaching the initial determination in FY 2014. Also, about 25% of the IPRs have been settled in FY 2014.The equivalent to allowance of an amendment is when a dependent claim is not reviewed or ultimately found "not unpatentable," and a claim from which it depends is found unpatentable. That can happen—for example—when an IPR is initiated for less than all of the claims, either because review of some claims was not requested by the Petitioner or review of some claims was denied by the Board. And, in the more recent final determinations, a number of claims have been found not unpatentable.

As most any patent prosecutor will tell you, the most common type of claim amendment in the face of prior art is to incorporate a limitation from an allowable dependent claim into a rejected claim from which it depends. To the extent that dependent claims are not reviewed in PTAB proceedings or survive the review; therefore, they are the equivalent of such a limiting claim amendment.

Unfortunately, it appears that many patent owners have failed to provide a basis for patentable distinctions of dependent claims in their original applications or argue such distinctions in the Patent Owner's Preliminary Response before the Board. Patent Owners have waived the opportunity to file a Preliminary Response in about 25% of the IPR cases in FY 2014 through May 15, 2014. See id. The waivers suggest that the Patent Owners who waived:

• may have lacked a good understanding of the importance of the Preliminary Response, or
• may have had no dependent claims under attack that were patentably distinguishable from the broader claims, or
• were unwilling to limit claims or argue distinctions because of co-pending infringement litigation and/or to enhance the possibility of settlement.

If the Patent Owner does not point out distinctions of the dependent claims at the outset of a PTAB proceeding, it may have an uphill battle to argue patentable distinctions later.