During an inter partes review (“IPR”) before the Patent Trial and Appeal Board (“PTAB” or “Board”), a patent owner may file a motion to amend the claims of a patent, “but only after conferring with the Board.”¹ When seeking to amend claims, the patent owner has the burden of demonstrating that the proposed claim amendment responds to a ground of unpatentability involved in the trial, and that the amendment does not enlarge the scope of the patent claims or introduce new subject matter.² However, such motions to amend are often denied.³ Thus, it is notable that on June 20, 2017, in Valeo North America, Inc. v. Schaeffler Technologies AG & Co. KG, the PTAB granted patent owner Schaeffler’s Motion to Amend.⁴ Currently, some of the requirements for motions to amend are being considered en banc by the Federal Circuit in In re Aqua Products, which seeks “to address the burdens of persuasion and production regarding motions to amend under 35 U.S.C. § 316(d).”⁵ But as of this writing, the Federal Circuit has not yet issued its en banc opinion. Thus, in the meantime, the PTAB’s reasoning in Valeo is instructive as an example of a successful motion to amend.

Valeo filed an IPR petition asserting the invalidity of claims 1-13 of Schaeffler’s U.S. Patent No. 8,161,740 (“the ’740 patent”), which claims a force transmission device that includes a rotational speed adaptive observer. The PTAB instituted the IPR on all challenged claims, finding that Valeo showed a reasonable likelihood that it would prevail on grounds of obviousness because four cited prior art references potentially rendered the claims invalid. After the IPR was instituted, Schaeffler filed a Patent Owner Response and also filed a Motion to Amend that was contingent on the PTAB finding original claims 1-13 unpatentable. In its Final Written Decision, the PTAB invalidated claims 1-13 based on obviousness and it thus took up the contingent Motion to Amend, which sought to add two new substitute claims.

Addressing the Motion to Amend, the Board articulated the current legal standards regarding such motions. It explained that “Schaeffler has the burden of proving patentability of each proposed substitute claim,” or more specifically, that “Schaeffler has the burden of proving that the substitute claims are patentably distinct over the prior art of record in the proceeding.”⁶

Turning to Schaeffler’s proposed substitute claims, the Board first addressed whether the two new claims have sufficient support in the specification. Schaeffler provided the Board with “a mapping between each claim limitation of each substitute claim, and support for the claimed subject matter in the ’740 patent.”⁷ Valeo did not dispute that the added subject matter has written description support, and the Board found that Schaeffler “adequately demonstrated” that claimed subject matter has support. While written description support was not disputed, the Board noted that “Valeo does dispute a number of aspects of Schaeffler’s Motion to Amend.”

First, the Board next considered Valeo’s argument that “Schaeffler failed to satisfy technical requirements established in certain decisions of the Board,” which the Board had “expressly directed Schaeffler to consider in drafting its Motion to Amend.”⁸ Valeo asserted that Schaeffler’s statement of contingency was unclear, arguing that Schaeffler’s Motion to Amend should have adopted a “claim-by-claim approach to specifying its contingency.” But the Board rejected this assertion, stating that “as we determined that all original claims are unpatentable, we see no reason why we should not understand Schaeffler’s Motion to Amend as advocating for anything other than a consideration of all of the substitute claims.”⁹ Additionally, the Board noted that “Schaeffler [did] not [improperly] propose multiple substitute claims for a single original claim.” Valeo also argued that Schaeffler failed to provide a construction for all newly-added claim terms. However, the Board determined that Schaeffler “sufficiently addressed the construction of added terms.” The Board explained that “[a]lthough best practices are for a patent owner to provide constructions for each added claim term that may be the subject of a dispute between the parties, we do not find Schaeffler’s failure to heed this guidance fatal.”¹⁰

Second, the Board considered Valeo’s contention “that Schaeffler fails to demonstrate that the claims are patentable over the prior art of record and art of which Schaeffler is aware.” The Board noted, though, that “Schaeffler makes clear that it relies on secondary considerations to demonstrate the claims are patentable over the closest prior art, conceding that the claimed elements are found in the prior art.” The Board explained that “Schaeffler identifies how the closest prior art references would not have suggested [the asserted secondary consideration of] unexpected results” compared to the closest prior art.¹¹ After considering both parties’ arguments concerning the two proposed substitute claims, the factual evidence in the Board’s obviousness analysis suggested “that the unexpected results evidence outweighs a relatively weak reason for combining [the prior art of record].”¹² Thus, the Board found the two substitute claims nonobvious.

Third, the Board considered Valeo’s contention that certain terms in the substitute claims rendered the claims indefinite under 35 U.S.C. § 112. However, after considering each of the disputed claim terms, the Board found that each disputed claim term met the definiteness standard.

Finally, the Board considered Valeo’s argument that the substitute claims violated the subject matter eligibility requirement of 35 U.S.C. § 101, alleging that they claim a fundamental law of nature and that there is no inventive concept sufficient to transform the claims into patent-eligible subject matter. However, the Board found that “Valeo fail[ed] to persuasively explain” how the claims ran afoul of § 101. Accordingly, the PTAB granted Schaeffler’s Motion to Amend, which added the two new substitute claims.

As noted earlier, this case is instructive because it provides an example of what the Board found to be sufficient given the particular facts of this case to successfully move to amend claims in an IPR under the PTAB’s current standards. What is required for a successful motion to amend may change soon, however, because the en banc Federal Circuit is currently evaluating the burdens of persuasion and production that are applicable to motions to amend in IPR proceedings. The Federal Circuit’s en banc decision will likely provide further guidance for parties addressing such motions. But for now, this case serves as an example of a successful motion to amend.