PTAB Allows First Claim Amendment in Inter Partes Review | Practical Law

PTAB Allows First Claim Amendment in Inter Partes Review | Practical Law

In International Flavors & Fragrances Inc. v. U.S., the Patent Trial and Appeal Board (PTAB) granted the US Department of Agriculture's motion to amend and substitute 18 of 19 proposed claims in an inter partes review under the Leahy-Smith America Invents Act (AIA).

PTAB Allows First Claim Amendment in Inter Partes Review

Practical Law Legal Update 3-569-1585 (Approx. 4 pages)

PTAB Allows First Claim Amendment in Inter Partes Review

by Practical Law Intellectual Property & Technology
Published on 23 May 2014 • USA (National/Federal)
In International Flavors & Fragrances Inc. v. U.S., the Patent Trial and Appeal Board (PTAB) granted the US Department of Agriculture's motion to amend and substitute 18 of 19 proposed claims in an inter partes review under the Leahy-Smith America Invents Act (AIA).
On May 20, 2014, the Patent Trial and Appeal Board (PTAB) issued a final written decision in International Flavors & Fragrances Inc. v. US, granting the US Department of Agriculture's (USDA) motion to amend and substitute 18 of 19 proposed claims for the original patent claims during an inter partes review (Case IPR2013-00124, (PTAB May 20, 2014)). Notably, this was the PTAB's first decision permitting a patent owner to amend claims in an inter partes review.
The USDA is the assignee of US Patent No. 7,579,016 ('016 patent) directed to methods of repelling insects including ticks and mosquitoes with analogs of the chemical compound isolongifolenone. International Flavors filed for inter partes review of 18 claims of the '016 patent and the PTAB instituted trial on all petitioned claims. Rather than filing a response to the petition, the USDA filed an unopposed motion to amend requesting to cancel original claims 1-26 and substitute them with:
  • Proposed claim 27, which corresponds to original claim 1 with an additional Markush group limitation specifying isolongifolenone analogs that may be used in the claimed method.
  • Proposed dependent claims 28-44, which correspond to original dependent claims 9-26, with the additional limitation of proposed claim 27.
  • Proposed claim 45, which corresponds to original claim 1, with the additional limitation that the target insects are ticks or mites.
In considering the USDA's motion, the PTAB noted:
  • A patent owner bears the burden of demonstrating by a preponderance of the evidence that the proposed claims are patentable.
  • Proposed substitute claims may not enlarge the scope of the original claims.
  • To prevail on a motion to amend in an inter partes review the patent owner must:
    • set out the support in the original patent disclosure for each claim that is added or amended; and
    • demonstrate the patentability of the proposed claims over the prior art in general.
The PTAB determined that:
  • None of the proposed substitute claims impermissibly enlarged the original claims' scope because the substitute claims included all of the original claims' features plus additional features.
  • The '016 patent's written description supported each of the proposed substitute claims.
  • The USDA demonstrated patentability over the prior art regarding claims 27-44 because the prior art did not provide:
    • a reason to modify isolongifolenone to arrive at the modified compound claims of proposed claim 27 (and therefore dependent claims 28-44); and
    • a reasonable expectation that these modifications would result in a compound that repelled the desired insects.
  • The USDA failed to demonstrate patentability over the prior art with respect to proposed substitute claim 45 because the prior art taught the use of applying isolongifolenone in an airspace that would inherently repel ticks and mites.
As the first of its kind, the decision provides guidance on how to prevail on a motion to amend and emphasizes that the patent owner:
  • Must demonstrate patentability over the prior art in general, rather than only the prior art considered during prosecution of the original claims, as stated in the PTAB's decision in Idle Free Systems, Inc. v. Bergstrom, Inc., Case No. IPR2012-00027 (PTAB Jan. 7, 2014).
  • Should submit a thorough expert declaration in support of its motion to amend that:
    • explains the level of ordinary skill in the art; and
    • demonstrates the unobvious features of the amended or substituted claims in view of all prior art.