Friday, January 15, 2016

US Supreme Court to hear Cuozzo

In taking the case, the U.S. Supreme Court will speak to whether or not the US Patent Office can
apply the BRI standard in assessing claim validity.

See Wall Street Journal link:

Judge Newman dissented in the Cuozzo panel decision, and went into a detailed history
of the AIA. An issue raised by Judge Newman was that the use of the BRI standard
was incommensurate with the unwillingness of PTAB to allow amendments.

Note comments by LBE at PatentlyO:

RE PM text — Thus claim amendments are usually NOT proposed in IPRs, as demonstrated by the paucity of prior Fed. Cir. appeals from IPRs on that issue before now among the numerous other IPR appeals.
Patent owners do not even usually have an incentive to propose amendments even to cure their claim ambiguities, since claim ambiguity can get the IPR proceeding terminated without any adverse 102 or 103 decision, to the advantage of the patent owner. —

Judge Newman in Cuozzo: There is no right of amendment in these new post-grant proceedings, and motions to amend are rarely granted.1
Note 1: See Andrew Williams, PTAB Update – The Board Grants Its Second Motion to Amend (At Least in Part), PATENT DOCS (Jan. 8, 2015), link to 2015/01/ptab-update-the-board-grants-its-second-motionto-amend-at-least-in-part.html; see also Jennifer E. Hoekel, PTAB Grants First Opposed Motion to Amend Claims-Patent Trial and Appeal Board, THE NATIONAL LAW REVIEW (January 14, 2015), link to

Is Judge Newman right, or wrong? Are patentees moving to amend? How frequently? What percentage of such motions are granted?


As a first point, it is not clear that an absence of appeals of denials of motions to amend proves that there were not many motions to amend. It could mean that the probability of winning such appeals was not high, which could be for a number of reasons.

As a second point, note text from a 16 June 2015 post at Global IP Matters:

The PTAB thus granted Neste’s motion to amend and allowed the substitute claims, finding that Neste’s new limitation of “a total feed comprising 5,000-8,000 w-ppm sulphur calculated as element sulphur” added to claim 25 (substitute for invalid original claim 1) increased the sulfur levels above those considered beneficial in the art: “The record before us does not establish persuasively that there was any art-recognized benefit to using a concentration of sulfur over 4431 w-ppm … [a]bsent any indication of a benefit to be obtained from adding even greater amounts of sulfur, the skilled artisan would have no reason to make the modifications … necessary to result in the [proposed] claimed invention.”

Prior to the decision in REG v. Neste, t he PTAB had only granted three motions to amend in IPR proceedings. This had caused much public debate and calls for reforms by both the PTAB and Congress. In response, the PTAB recently introduced a package of “quick fixes” that included expanding the page limit from 15 to 25 pages for motions to amend to ease the burden on patent holders. The PTAB is also considering several other changes in a forthcoming second rules package to further reduce the patent holder’s burden with respect to motions to amend. Congress has also introduced provisions in the proposed STRONG PATENTS Act that would make it easier to amend patents, among other patent reforms. Moreover, the seeming relaxed standard applied by the panel in REG v. Neste may also mark a turning point in motions to amend and signal the beginning of new opportunities for patent owners to survive an IPR proceeding by proposing new and patentable claims.


Lawrence Ebert

December 10, 2015 at 3:53 pm

And contemplate text from Law360:

Moreover, in Avaya Inc. v. Network-1 Security Solutions Inc., IPR2013-00071, Paper 38 (USPTO PTAB July 22, 2013), the PTAB stated that the patent owner must explain why each new claim is patentable over any other noncited art. The PTAB’s decision here clarifies that the patent owner must explain the significance of the proposed new features to be added, from the point of view of a person of ordinary skill in the art.

In another decision, the PTAB stressed that motions to amend must be limited to 15 pages, including the proposed claims. Innolux Corp. v. Semiconductor Energy Laboratory Co. Ltd., IPR2013-00066, Paper 23 (USPTO PTAB July 18, 2013). The PTAB did not deviate from the rule, even when the patent owner pleaded that the text of the new claims would take up most of the motion’s pages. The PTAB recommended that the patent owner submit fewer amended claims and pursue the rest by way of ex parte re-examination or reissue.

Thus, amendments in an IPR proceeding should be narrowly tailored to overcome the prior art. Patentees desiring additional claim amendment options should consider instead pursuing re-examination or reissue.

There were no comments on PatentlyO denying that there have been few amendments allowed in IPR proceedings.


En banc rehearing of Cuozzo was denied.

More Cuozzo at CAFC

A Supreme Court decision might impact other issues, such as whether rules can be implemented
allowing PTAB to decide petitions in IPRs AND rule on validity of claims in IPRs.
Recall Newman's dissent in Ethicon:


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