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Idle Free Systems, Inc. v. Bergstrom, Inc.

Paper 26, June 11, 2013

IPR2012-00027 (JL) (Patent 7,591,303)

[Patent owner must confer with the Board prior to filing motion to amend claims. Substitute claims may  only narrow challenged claims they replace and must be responsive to challenged grounds of patentability]


Patent Owner, Bergstrom, filed motion to amend claims.


The Board dismissed Patent Owner’s motion to amend claims because it was filed without conferring with the Board, and because Bergstrom proposed too many substitute claims without justification.

The Board provided an overview of the scope and procedure for claim amendment and emphasized these main points:

  • Claims amendment is authorized by 35 U.S.C. § 316(d), which allows Patent Owner to cancel claims or propose a reasonable number of substitute claims for each challenged one.
  • The Director set out regulations for filing motions to amend in 37 C.F.R. § 42.121.
  • A patent owner is required to confer with the Board prior to filing a motion to amend claims pursuant to 37 C.F.R. § 42.121(a).
  • In the absence of special circumstances, it is assumed that each challenged claim may be replaced by one substitute claim.
  • Each proposed claim must be traceable to an original challenged clam.
  • A motion to amend may be denied pursuant to 37 C.F.R. § 42.121 (a)(2) if amendment does not respond to ground for unpatentability or seeks to enlarge the scope of claims
  • A proposed claim is not responsive to ground of patentability if it fails to include or narrow each feature of the claim it replaces.
  • For each proposed substitute claim, patent owner is expected to make a showing of patentable distinction over the prior art. To this end, patent owner should identify specifically features added to each proposed claims and provide technical facts and reasoning regarding those features.
  • When more than one substitute claim is proposed for a given challenged claim, a patent owner must show special need to justify multiple substitute claims and show patentable distinction of each substitute claim over all the other substitute claims.
  • When a dependent substitute claim is presented as patentable over prior art on the same basis as an independent claim on which it depends, a patent owner must provide meaningful reasons for making the additional changes (if any) effected by that dependent claim.


The Board emphasizes the narrow scope of inter partes review and its adjudicatory rather than examinational nature, therefore, any claim amendment must be specific and targeted. In its motion to amend claims, Patent Owner may only seek to cancel or narrow the challenged claims and must address challenged grounds of patentability by showing patentable distinction of  substitute claims over the challenged claims.


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