AIA Post-Issuance Proceedings – First Claim Amendment Motion Granted in Inter-Partes Review

Prior to April 22, 2014, and since the filing of the first petition for inter partes review on September 16, 2012, the Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office (USPTO) had not granted any patent owner’s motion to amend claims of patents under review. On April 22, 2014, this record changed as the PTAB issued its first decision in International Flavors & Fragrances, Inc. v. U.S. Department of Agriculture (IPR2013-00124) partially granting the patent owner’s motion for claim amendment.

IPR20013-00124 began with the filing of a petition for inter partes review by International Flavors & Fragrances (IFF) on January 25, 2013. In response to the petition, IPR proceedings were instituted by the PTAB on June 27, 2013 to review claims 1 – 26 of U.S. Patent No. 7,579,016 (the ‘016 patent), entitled “Methods for repelling arthropods using isolongifolenone analogs.”

In response to the instituted proceedings, patent owner U.S. Department of Agriculture (USDA) filed a motion to amend on September 30, 2013, in which it proposed to cancel claims 1 – 26 and substitute new claims 27 – 45. As identified by the USDA in its motion, proposed new claims 27 – 45 included two independent claims and seventeen dependent claims, together representing as a “reasonable number,” less than one substitute claim for each canceled claim. Proposed new independent claim 27 included all of the limitations of original independent claim 1, plus a portion of original claim 8 that limited the repellant material of the claimed method to certain isolongifolanone compounds. Proposed new independent claim 45 also included all of the limitations of original independent claim 1, plus an additional limitation requiring that the arthropods repelled according to the claimed method were ticks or mites. Proposed new dependent claims 28 – 44 corresponded to original dependent claims 9 – 26.

In its decision to partially grant the USDA’s motion, the PTAB found that proposed new claims complied with the statutory requirements prohibiting an enlargement of original claim scope and the rules requiring that the claims find adequate support in the specification. In addition to these requirements, the PTAB described a burden held by the USDA for demonstrating patentability as follows:

Distinguishing the proposed claims only from the prior art references applied to the original patent claims is insufficient to demonstrate patentability over prior art. As the moving party, a patent owner bears the burden to show entitlement to the relief requested. … Specifically, in the case of a motion to amend, the patent owner bears the burden of proof [by a preponderance of the evidence] to demonstrate patentability of the proposed claims over the prior art in general, and thus entitlement to the proposed claims. … [That] does not mean that the patent owner is “assumed to be aware of every item of prior art presumed to be known to a hypothetical person of ordinary skill in the art.” … Rather, the patent owner should discuss, as well as present evidence, if appropriate, as to the level of ordinary skill in the art, and what was known regarding the features being relied upon to demonstrate patentability of the proposed claims.

(Citations omitted).

With this standard in mind, the PTAB found that the USDA met its burden with respect to proposed new independent claim 27:

Patent Owner provides several publications, as well as the Declaration of Dr. Aijun Zhang … to demonstrate the level of ordinary skill in the art, as well as the unobviousness of features being relied upon to demonstrate patentability of the proposed claims.
                                                                . . .
Specifically, Patent Owner cites several references as evidence that small changes in structure can result in a compound with very different properties. … Thus, Patent Owner argues that the ordinary artisan would have expected that minor structural changes to a known insect repellent could result in a compound that no longer repels insects.
                                                                . . .
Because the prior art does not provide a reason to modify isolongifolanone to arrive at the modified isolongifolanone compounds of proposed claim 27, nor does it provide a reasonable expectation that such modifications would result in a compound having the desired insect repellent activity, we conclude that the preponderance of the evidence supports the patentability of claim 27. As to dependent claims 28-44, because those claims incorporate all of the limitations of claim 27, they would be patentable for the same reasons.

(Citations omitted).

On the other hand, the PTAB did not find that the USDA met its burden with respect to proposed new independent claim 45:

Behan teaches the use of isolongifolanone to repel mosquitoes or cockroaches. Patent Owner provides no evidence that ticks and mites would not be present on the same objects or areas where mosquitoes and cockroaches are found, which are the insects addressed by Behan. Thus, by applying the isolongifolanone taught by Behan to an object or airspace for the purpose of repelling mosquitoes or cockroaches, one would also inherently repel ticks and mites.

On these bases, the PTAB granted the USDA’s motion with respect to proposed new claims 27 – 44 and denied its motion with respect to proposed new claim 45.

Other commentators have questioned the significance of this decision by the PTAB by pointing out that the USDA’s motion was unopposed by IFF and effectively agreed to by both parties in settlement. Nevertheless, with this decision, the PTAB has provided at least one pathway for patent owners seeking to amend claims during an inter partes review. We will continue to monitor subsequent decisions by the PTAB and Federal Circuit that provide additional insights and pathways.