It is hard to explain how this post, discussing the first ever granted Motion to Amend in an inter partes review, sat in “draft” mode for over 5 months. This is especially perplexing given the difficulty Patent Owners are experiencing relating to the issue of amending claims in an IPR. But, in a way, the decision has become even more remarkable in the months that have passed since it issued on May 20, 2014, because no other Motion to Amend has been granted. So, today we finally address International Flavors & Fragrances, Inc. v. The United States of America, as Represented by the Secretary of Agriculture, IPR2013-00124, wherein the Board granted the first (and still only) Motion to Amend in the over two years of inter partes review. So….what went right for the US Government given how the amendment process has gone so wrong for every other Patent Owner?

After the Petition by IF&F was filed, Patent Owner (the US Government) did not contest the grounds set forth in the Petition, instead conceding the unpatentability of the challenged claims and filing a Motion to Amend Claims. This motion proposed amended claims 27-45. Order at 2. Of perhaps critical importance in this decision, Petitioner did not oppose the Motion to Amend, leaving the Board by itself to decide the patentability of the amended claims solely on the record presented in the Petition and Motion to Amend.

Following the precedent of Idle Free Sys., Inc. v. Bergstrom, Inc., IPR2012-00027, at 33 (PTAB January 7, 2014 (Paper 66)), the Board noted that in a Motion to Amend, the Board bears the burden of demonstrating patentability of the proposed claims over the prior art in general to be entitled to the proposed amended claims.  Id. at 7. To that end, the Board first determined that the proposed claims were not broadening and had written description support. Id. at 9-10.

The Board then turned to the issue of patentability over the prior art, a hurdle that no other Patent Owner had before, or has since, negotiated. By way of background, the patent-at-issue relates to a new compound useful as an insect repellent. Patent Owner proposed 18 amended claims – 2 independent claims (claims 27 and 45) and 16 dependent claims (that all depended from claim 27). Claim 27 amended an original claim by specifying a Markush group from which the claimed analog was to be selected. Claim 45 added that the claimed repellent is applied against ticks or mites.

Interestingly, the Board first remarked that Patent Owner only addressed the the art presented in the Petition and identified one of those references as the “apparent” closest prior art. More specifically, Patent Owner argued that “Substitute independent claim 27 is patentable over the cited references, of which Behan appears to be the closest known prior art, because the cited references do not disclose or suggest that….” This is the type of conclusory statement that has sunk many previous Patent Owners. See, e.g., Toyota Motor Corp. v. Am. Vehicular Sciences LLC, IPR2013-00419, Paper 32, at 4 (PTAB Mar. 7, 2013) (“Explaining patentability over references applied by the petitioner against the original patent is not the main event.”).

Here, though, the PTAB decided that the US Government had sufficiently demonstrated, beyond the conclusory statement, that “the level of ordinary skill in the art, as well as providing evidence regarding what would have been understood by the ordinary artisan as to those features being relied upon to demonstrate the patentability of the proposed claim.” Order at 12. Specifically, the Board noted evidence that explained that small changes in structure can result in significantly different properties in the chemical compound. As such, because the prior art did not provide a reason to modify the parent compound to arrive at the members of the Markush group of new claim 27, nor did the art provide a reasonable expectation that such modifications would result in a compound having the desired insect repellent activity, the preponderance of the evidence supported the patentability of proposed claim 27. Id. at 15. Notably absent, however, was any explanation why, in this case, a failure to go beyond the art cited in the petition was sufficient, when that has not been the case for many other patent owners.

Because claims 28-44 all incorporated the limitations of claim 27, they were found patentable for the same reasons. Id. 

The Board did reject claim 45 that, as mentioned, sought to claim the use of the parent compound for ticks and mites, because the same compound was shown in the prior art to be effective against cockroaches and mosquitoes. Id. at 17-18. The Board found that maxim that, merely discovery a new benefit of an old process does not render the process again patentable, was applicable here. Proposed substitute claim 45 was, therefore, denied.

When all of the Final Written Decisions that have denied Motions to Amend have been reviewed, it is difficult to come up with a firm understanding of why many other motions that did not discuss the art generally were denied, yet this motion by the US Government was granted. For example, at the the PTAB AIA Roundtable, the Board suggested that a certified prior art search, or some other good faith effort by the patent owner to tell the Board what it knows, especially about the added feature, is required. We are not sure that was done in this case, but the Board still granted the motion.