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Volume XII, Number 187


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Amending Patent Claims In AIA (America Invents Act) Trials: Difficult, But Not Impossible

Patent Owners have struggled to amend the claims of a patent in AIA trials (i.e.inter partes review and covered business method review proceedings). Unlike ex parte prosecution proceedings (e.g., traditional prosecution, ex parte reexamination, and reissue), Patent Owners in AIA trials are not entitled to amend the claims as a matter of right. Rather, Patent Owners must file a motion to amend. Under the general requirements to amend claims established by the Board, Patent Owners are faced with a high burden that only one Patent Owner has satisfied to date.

In this issue, we discuss the general requirements to amend claims established by the Board and the only motion to amend that the Board has granted.  We conclude with practice tips on how to improve the likelihood of success on a motion to amend.

A. General Requirements For Amending Claims In AIA Trials

In Idle Free Sys. v. Bergstrom, Inc., IPR2012-00027 (Paper 26, Jun. 11, 2013), the Board provided guidance and established general requirements for amending claims in AIA trials. As the moving party, a Patent Owner bears the burden of showing that it is entitled to amend the claims. The Board explained that it does not examine amendments to the claims like examiners do in ex parte prosecution proceedings. The Board decides the merits of the motion to amend and will add the amended claim to the patent without examination if the motion is granted. In other words, the Board does not examine claims to “reject” or “allow” claims. Rather, it decides whether a Patent Owner has presented sufficient evidence to show that the proposed substitute claims are patentable.

The Board also cautioned Patent Owners to make the amendment to the claims contingent on the outcome of the trial. For example, if the Patent Owner defends successfully the challenge to the original claims, then the Board would dismiss the motion to amend as moot. On the other hand, if the Patent Owner did not make the amendments to the claims contingent on a finding that the original claims are unpatentable, then the Board would be required to decide the motion on the merits, and, if granted, the Patent Owner might lose the original claims and end up with claims of narrower scope.

To meet their burden to amend claims, a Patent Owner should present arguments supporting the patentability of  a proposed substitute claim. Specifically, the Patent Owner should conduct a novelty and non-obviousness analysis of the proposed claims in view of the prior art of record and the prior art not of record but otherwise known to the Patent Owner. In addition, a Patent Owner should discuss the level of ordinary skill in the art and the significance and usefulness of the added features in a proposed substitute claim. A Patent Owner may not broaden the scope of the original claims and must identify the support for the proposed amendments in the original application.

B. A Motion To Amend Claims Is Granted

In Int’l Flavors & Fragrances Inc. v. The United States of America, IPR2013-00124 (Paper 12, May 20, 2014), the Board granted the first motion to amend claims in an AIA trial.  The Patent Owner, the United States Department of Agriculture (“USDA”), did not file a response to the petition. Instead, the USDA filed a motion to amend cancelling the original claims and proposing substitute claims. The Petitioner did not oppose the motion to amend.

At issue was whether the disclosure of a compound for repelling insects in a prior art reference rendered obvious variants of the prior art compound for repelling arthropods, such as mosquitoes or cockroaches. The USDA submitted several prior art publications and an expert witness declaration to demonstrate the level of ordinary skill in the art at the time of the invention. The USDA relied on these publications as explained by its expert to argue that small changes in the chemical structure of the compound can result in a new compound with very different properties, which would lead a person of ordinary skill in the art to expect that minor structural changes to a known insect repellant could result in a compound that no longer repels insects. The Board accepted the argument and granted the motion concluding that the prior art did not provide a reason to modify the prior art compound to arrive at the compound variants of one of the proposed substitute claims, nor did it provide a reasonable expectation that such a modification would result in a compound having the desired arthropod repellent activity.  

C. Practice Tips

Patent Owners have been largely unsuccessful in amending claims in AIA trials because they have not conducted an adequate patentability analysis to show that the proposed claims are patentable. For example, Patent Owners have not discussed the level of ordinary skill in the art to explain what a person of ordinary skill in the art knew about the proposed new features at the time of the invention. Patent Owners have also failed to discuss why the proposed claims are non-obvious. To improve the likelihood of success in amending claims, a Patent Owner should:

  • Avoid mere conclusory statements to the effect that one or more added features are not described in any prior art and would not have been suggested or rendered obvious by prior art.

  • Discuss the level of ordinary skill in the art to explain what was known to a person of ordinary skill in the art and how the proposed features are patentable in view of that knowledge.

  • Propose construction of new claim terms.

  • Provide a novelty analysis of the proposed substitute claim in view of the prior art of record and any other prior art known to the Patent Owner, even if it is not of record.

  • Provide a non-obviousness analysis of the proposed substitute claim in view of the prior art of record and any other prior art known to the Patent Owner, even if it is not of record.

  • Indicate clearly that the proposed substitute claims are contingent on a finding of unpatentability of the original claims.

  • Alternatively, a Patent Owner should consider a reissue application or an ex parte reexamination of the challenged patent if it wishes to have more freedom to amend the claims.

Trends at the Board

Current trends show petitioners have been largely successful in obtaining a trial on at least some of the challenged claims.  The Board has issued several final written decisions in IPR trials resulting in the cancellation of the claims upon which the trial was instituted in most cases.  In a few cases, the Board has upheld the patentability of some of the challenged claims. As noted above, the Board has granted only one motion to amend.

IPR Trends at the Board Sept. 2012 — Sept. 2014

Petitions Filed


Petitions Denied

198 (22%)

Trials Instituted

693 (78%)

Trials Dismissed/Settled


Trials Adjudicated


©2022 MICHAEL BEST & FRIEDRICH LLPNational Law Review, Volume IV, Number 268

About this Author

Benjamin E. Evans, Michael Best Law Firm, Intellectual Property Attorney, Patent Prosecution

Ben concentrates his practice on preparing, filing, and prosecuting patent applications, particularly in the mechanical arts field. He provides his clients with a broad array of intellectual property legal advice, including:

  • Reviewing patentability and clearance searches

  • Conducting due diligence analyses

  • Conducting infringement analyses

  • Attacking competing patents and defending clients’ patents through inter partes ...

Martin Stern, Michael Best Law Firm, Intellectual Property Attorney

Marty Stern is a partner in the Intellectual Property practice group, as well as a past member of the firm’s Management Committee and a former Co-chair of the Intellectual Property practice group. Over the course of his career, Marty has been involved in a wide variety of intellectual property litigation matters, including trademark, copyright and patent infringement matters, trade secret misappropriation, enforcement of restrictive covenants and unfair competition matters. His experience in contested patent matters includes challenging the validity of patents in U.S....

Kevin P. Moran, Intellectual Property attorney, Michael Best, manufacturing industry legal counsel,

Clients look to Kevin for strategic counsel on the protection of their intellectual property, including acquisition of, enforcement of, and defense against United States and international patents.

His strong track record in these areas, paired with a technical background as a product engineer, give Kevin a unique perspective on the challenges facing developers of mechanical, electro-mechanical, and biomedical technologies.

Kevin has significant experience in the areas of fitness equipment, motorcycles, vehicle braking...

Marshall Schmitt, Michael Best Law Firm, Life Sciences and Intellectual Property Attorney

Marshall’s practice focuses on resolving disputes regarding scientific issues and counseling clients in chemical and biotechnology matters. A skilled first chair litigator and trial lawyer, his practice includes helping clients develop strategies for obtaining and effectively enforcing their intellectual property rights.

Clients seek Marshall's advice to help solve complex intellectual property-related problems. His strong grasp of IP, together with effective use of internal investigations, enable him to understand how a dispute will...

Gilberto E. Espinoza, intellectual property law attorney michael best law firm

Gilberto is a persuasive and effective advocate for clients seeking to protect their intellectual property assets. Focusing his practice on patent litigation at both the trial and appellate levels, he is actively involved in all phases of litigation and trial.

He has built an enviable track record by successfully challenging patents in inter partes review (IPR) proceedings at the Patent Trial and Appeal Board and by fighting off patent infringement suits. Gilberto is also experienced in handling litigation stemming from issues related to unfair competition, false...