In the Riverbed Tech., Inc. v. Silver Peak Sys., Inc. cases, the PTAB was presented with motions to amend the claims of the patents at issue. The PTAB, in granting the motions in part, discussed its rationale and provided guidance for future motions to amend. IPR2013-00402, Paper 35 (December 30, 2014); IPR2013-00403, Paper 33 (December 30, 2014).

To win on a motion to amend, the movant must demonstrate the following:

  1. that the proposed substitute claims are patentable over the prior art of record and any prior art not of record but known to the patent owner;
  2. that the proposed amendments are responsive to a ground of unpatentability involved in the trial;
  3. that the proposed substitute claims do not enlarge the scope of the claims being replaced; and
  4. that the proposed substitute claims have written description support in the original disclosure or in an earlier-filed disclosure for which the benefit of the filing date is sought.

37 C.F.R. §§ 42.20(c); 42.121(a)(2); 42.121(b). To meet the patentability requirement, the movant must show, by a preponderance of the evidence, that each element of the proposed substitute claims is “generally patentable.” In the Riverbed cases, the PTAB offered some additional guidance in this area.

In both Riverbed cases, the Board granted-in-part the patent owner’s motions to amend. In granting the motions as to a first substitute claim group, the Board stated that the patent owner had met its burden by 1) distinguishing each claim element over the prior art of record, and 2) distinguishing each claim element as non-obvious. This was adequate to establish “general patentability.”

In denying the motions as to a second substitute claim group, the Board stated that proposed substitute dependent claims must be patentably distinct from substitute parent claims. In this case, the patent owner failed to distinguish the proposed substitute dependent claims as non-obvious in view of the proposed substitute parent claims.

In denying the motion as to a third substitute claim group in Riverbed I, the Board stated that the claims failed to meet patent-eligible criteria. In denying the motion as to a third substitute claim group in Riverbed II, the Board stated the patent owner failed to specify adequate function and corresponding structures for claims containing means-plus-function language.

These decisions illustrate that the PTAB requires the patent owner to satisfy §§ 101, 102, 103 and 112 when proposing substitute claims in a motion to amend. While future case law will shed more light on this requirement, thus far the requirement has proven to be a high bar for the patent owner to meet.