Motion to Amend in IPR

A motion to amend (MTA) is a filing by the patent owner in an Inter Partes Review (IPR) proceeding seeking to replace original claims with narrower substitute claims. IPR is a post-grant proceeding at PTAB — unlike prosecution before a USPTO examiner, the patent owner does NOT have an unlimited right to amend claims; instead, they must file a motion seeking PTAB's permission. STATUTORY BASIS: 35 U.S.C. § 316(d) provides that the patent owner may file one motion to amend the patent during IPR, and states that the amendment 'may not enlarge the scope of the claims of the patent.' TIMING: the patent owner files the MTA as part of or with the Patent Owner Response (POR), which is due 3 months after the institution decision; PTAB must authorize the MTA (it is 'as of right' — PTAB cannot deny the right to file, but can deny the actual amendment); CONTINGENT vs. UNCONDITIONAL AMENDMENTS: the patent owner may file unconditional amendments (regardless of IPR outcome) or contingent amendments (only if the original claims are found unpatentable); contingent amendments are strategically common because if the original claims survive, there is no need to accept the narrower substitute claims; the Patent Office pilot program for motions to amend (begun in 2019) provides additional guidance and allows preliminary feedback from PTAB on a proposed amendment before it is formally filed.

A motion to amend in IPR must satisfy stringent requirements: (1) CLAIM NARROWING — the substitute claims must be narrower than the original claims; the amendment cannot enlarge scope in any limitation; adding new limitations that narrow the claim is the standard approach; (2) NO NEW MATTER — the substitute claims must be supported by the original disclosure (specification) of the patent; any limitation added must have written description support in the original specification; (3) RESPOND TO GROUNDS OF UNPATENTABILITY — the amendment must specifically respond to at least one ground of unpatentability identified in the institution decision; (4) PATENT OWNER'S WRITTEN DESCRIPTION SUPPORT — the MTA must include a detailed explanation of written description support for EACH new limitation added to EACH substitute claim; this often requires citing specific passages from the patent specification; (5) SHOW PATENTABILITY OVER THE PRIOR ART — POST-Aqua Products: the patent owner bears the burden of production (at minimum) to show that the proposed substitute claims are patentable; they should present claim charts demonstrating that the proposed substitute claims distinguish over the prior art of record in the IPR (and ideally over the broader prior art); (6) BRIEFING: the MTA is filed as a brief with supporting evidence; PTAB may allow responsive briefing from the petitioner and a reply from the patent owner; ONE AMENDMENT PER PATENT: the statute allows only ONE MTA per proceeding; the patent owner should make it count.

Aqua Products, Inc. v. Matal (Fed. Cir. 2017, en banc) is the most important Federal Circuit decision on the burden of proof for motions to amend in IPR. THE BACKGROUND: before Aqua Products, PTAB required the patent owner to bear the full burden of proving that proposed substitute claims were patentable — including proving patentability over ALL prior art, not just the prior art of record; this created an extraordinarily high bar that resulted in nearly all amendments being denied (grant rate ~5% at the time). THE AQUA PRODUCTS HOLDING: the en banc court vacated PTAB's framework and held that 37 C.F.R. § 42.20(c) cannot shift the burden of persuasion (that the proposed claims are unpatentable) to the patent owner; the petitioner bears the ultimate burden of proving unpatentability (same as for the original claims); PTAB must consider the totality of the record. POST-AQUA PRODUCTS PRACTICE: PTAB revised its amendment trial practice: the patent owner must present a proposed substitute claim, explain why the substitute claim is patentable over the prior art of record, and provide written description support; the petitioner then has the opportunity to oppose; PTAB considers both submissions and makes a determination; AMENDMENT GRANT RATE AFTER AQUA PRODUCTS: the grant rate for motions to amend improved somewhat from ~5% to approximately 10–20%, but amendments remain difficult to obtain; many amendments are denied because: the proposed claims are not narrow enough; the amendment doesn't address the specific institution grounds; written description support is inadequate; or the petitioner raises compelling prior art challenges to the proposed substitute claims.

Motions to amend in IPR have historically been granted at very low rates (5–20% depending on the time period) for several reasons: (1) NARROW SCOPE CONSTRAINT — the amendment must be narrowing; if the original claims are already very narrowly drafted (which is common in continuation patents), there is limited room to narrow further without creating claims so narrow they have limited commercial value; (2) NO NEW MATTER — any new limitation must be supported by the original specification; adding truly novel limitations that would distinguish over the prior art but aren't in the specification is not allowed; (3) ADVERSARIAL PROCEEDING — unlike prosecution, where the examiner works with the applicant to find allowable claims, IPR is adversarial; the petitioner is actively opposing the amendment and can introduce new prior art specifically targeted at the proposed substitute claims; (4) PETITIONER'S OPPORTUNITY TO RESPOND — after the patent owner proposes substitute claims, the petitioner can search for NEW prior art specifically directed at those new limitations and cite it in opposition; this asymmetry makes amendments difficult; (5) TIMING — the patent owner must propose amendments relatively early in the IPR (with the POR); there is limited time to develop comprehensive new prior art responses; (6) STRATEGIC CONSIDERATIONS — even if the patent owner obtains narrower substitute claims, the narrower claims may not cover the accused infringing product, reducing their commercial value; the patent owner must balance amendment risk against the risk of having the original claims cancelled entirely.

Given the difficulty of obtaining amendments in IPR, patent owners have several alternatives: (1) FIGHT ON THE MERITS — present the strongest possible Patent Owner Response (POR) with expert declarations, arguing the original claims are patentable; many IPRs result in PTAB confirming the challenged claims without any amendment; (2) PARALLEL CONTINUATION APPLICATION — while the IPR is pending, file a continuation application in the USPTO with narrower claims covering the specific features at issue; if the original claims are cancelled, the continuation may still issue with claims that cover the same accused product; continuations filed during IPR can be expedited; (3) REISSUE APPLICATION — under 35 U.S.C. § 251, the patent owner can file a reissue application to correct errors and amend claims; unlike IPR amendments, reissue is examined by a USPTO examiner (not adversarial); reissue can address errors in claim scope; CAUTION: broadening reissue has a 2-year window; (4) SUPPLEMENTAL EXAMINATION — 35 U.S.C. § 257 allows the patent owner to request supplemental examination to consider new information; can address prior art concerns; (5) NEGOTIATE SETTLEMENT — if the IPR is instituted and the merits look unfavorable, settlement before FWD can avoid estoppel and cancellation; settlement terms are confidential but must be filed with PTAB.