Idle Free v. Bergstrom (IPR2012-00027): The Board’s Early Guidance on Motions to Amend

Idle Free Systems, Inc. v. Bergstrom, Inc., IPR2012-00027, was one of the first inter partes reviews instituted under the America Invents Act. In Paper 26, entered June 11, 2013, a six-judge panel dismissed the patent owner’s motion to amend and used the occasion to explain, in general terms, what the Board expected from any motion to amend. The Board later referred to Paper 26 as an informative decision, and for several years it was one of the most cited statements of motion-to-amend practice.

Background

The petitioner asked for a conference call because it considered the number of substitute claims in Bergstrom’s motion (Paper 22) unreasonable. During the call, Bergstrom conceded that several original claims (1–4, 8, 10 and 17–19) were unpatentable on the instituted grounds, and the Board said it would cancel them on that concession.

The motion itself had a more basic problem. Bergstrom filed it without first conferring with the Board about the amendments it had in mind, as 37 C.F.R. § 42.121(a) then required. By the Board’s count, the motion also offered ten alternative substitute claims for original claim 1 and thirteen for original claim 17, without saying which substitute claim replaced which original claim.

What the Board decided

The Board dismissed the motion for failure to confer. Because this was among the first IPRs and no guidance yet existed, it did not treat the lapse harshly: it allowed Bergstrom one week to file a renewed motion without conferring again. It then set out several principles.

• Claim-by-claim substitution. Under 35 U.S.C. § 316(d)(1)(B) and § 42.121(a)(3), a patent owner may propose a reasonable number of substitute claims for each challenged claim, with a presumption that one is enough. Each proposed claim should identify the challenged claim it replaces.
• Narrowing only. A substitute claim must respond to a ground of unpatentability and may not enlarge scope (§ 316(d)(3)). The Board read this to mean that a substitute claim must keep or narrow every feature of the claim it replaces.
• No wholesale redrafting. A wish for a hierarchy of fallback positions was not a special circumstance justifying extra claims. The Board noted that a patent owner wanting to restructure its claims could use reissue or ex parte reexamination instead.
• Patentable distinction. Relying on the moving-party rule in 37 C.F.R. § 42.20(c), the Board said the patent owner had to show that each substitute claim was patentable over the prior art of record and over prior art known to it, with technical facts and reasoning rather than a conclusory statement from counsel. Additional substitute claims for the same original claim had to be patentably distinct from one another.
• Written description. The patent owner also had to show support in the original disclosure.
• Clear contingency. The motion should state, claim by claim, which substitute claim is to replace which original claim and under what condition.

Applied to Bergstrom’s motion, the panel found that it did not identify which claims were being replaced, did not state the contingency clearly, and offered no reason to overcome the one-for-one presumption beyond a general desire for backup positions.

Why it matters

The order explains the structure that still frames a motion to amend: the statute allows cancellation and a reasonable number of substitute claims, the claims must not broaden or add new matter, and the motion must show written description support. Those requirements remain in 35 U.S.C. § 316(d) and the Board’s rules. For an overview, see amending patent claims during inter partes review.

The part of the order that has not lasted is its allocation of the burden. Placing on the patent owner the burden of proving patentability over prior art in general, including art “known to the patent owner,” made motions to amend very difficult to win in the early years of AIA trials. The same proceeding produced a later final written decision that elaborated on that burden, which the Board cited in cases such as International Flavors & Fragrances v. United States.

Later developments

In Aqua Products, Inc. v. Matal (Fed. Cir. 2017) (en banc), the Federal Circuit held that the patent owner does not bear the burden of persuasion on the patentability of substitute claims. In 2019 the Board designated Lectrosonics, Inc. v. Zaxcom, Inc., IPR2018-01129, Paper 15, precedential as guidance on motions to amend, and the earlier Idle Free and MasterImage guidance was de-designated. The USPTO has since adopted motion-to-amend procedures by rule, so readers should check the current text of 37 C.F.R. § 42.121 and current USPTO guidance. Designations can change; check the USPTO’s list of precedential and informative decisions.

Key takeaways

• Paper 26 dismissed Bergstrom’s motion to amend because the patent owner had not conferred with the Board before filing.
• The Board required claim-by-claim substitution, narrowing-only amendments, a clear contingency, and a presumption of one substitute claim per challenged claim.
• Its statement that the patent owner must prove patentability over the prior art was later rejected by Aqua Products (2017).
• The order is now history; current motion-to-amend practice is governed by § 42.121 as amended and Lectrosonics.