International Flavors & Fragrances v. United States (IPR2013-00124): A Motion to Amend Granted in Part

In the early years of inter partes review, motions to amend were rarely granted. International Flavors & Fragrances Inc. v. United States of America, as represented by the Secretary of Agriculture, IPR2013-00124, is an exception. In its final written decision (Paper 12, entered May 20, 2014), the Board granted the patent owner’s motion to amend as to most of its substitute claims and denied it as to one.

Background

The petitioner challenged claims of U.S. Patent No. 7,579,016, which concerns using analogs of isolongifolenone to repel arthropods such as ticks and mosquitoes. Its main reference, Behan, listed perfume ingredients that could be used as insect repellents, including isolongifolanone, a compound within the formula of the patent’s claim 1. Behan gave no data for that compound. The Board instituted trial on all challenged claims on grounds of anticipation by Behan and obviousness over Behan combined with other references.

The patent owner filed no patent owner response. It filed only a motion to amend, asking to cancel claims 1–26 and substitute claims 27–45. The petitioner did not oppose, and neither party requested a hearing.

Proposed claim 27 narrowed claim 1 to the first five compounds of the Markush group in original claim 8, with dependent claims 28–44 tracking original claims 9–26. Proposed claim 45 narrowed claim 1 a different way, by requiring that the arthropods be ticks or mites.

What the Board decided

The Board treated the patent owner, as moving party under 37 C.F.R. § 42.20(c), as bearing the burden of showing patentability by a preponderance of the evidence. It addressed three requirements in turn.

1. No broadening. Claims 27 and 45 kept every limitation of claim 1 and added one, and the dependent claims changed only their dependency. None enlarged the scope of the original claims (35 U.S.C. § 316(d)(3)).
2. Written description. The patent owner cited specific paragraphs of the application as filed for each proposed claim, and the Board agreed those paragraphs provided support (§ 42.121(b)(1)).
3. Patentability over the prior art. Following the final decision in Idle Free, the Board said it was not enough to distinguish only the references applied at institution. The patent owner had to address the level of ordinary skill and what was known about the features it relied on, though it was not assumed to know every item of prior art.

On claim 27, the patent owner went beyond calling Behan the “apparent” closest art. It submitted publications and an expert declaration showing that small structural changes to repellent compounds can change or destroy their activity. Because Behan gave no reason to modify isolongifolanone in the claimed ways and no reasonable expectation that the modified compounds would work, the Board found claims 27–44 patentable.

Claim 45 failed. It still covered isolongifolanone itself, the compound Behan taught for repelling mosquitoes and cockroaches. Applying Behan’s compound to an object or area to repel those insects would also repel any ticks and mites present, and the patent owner offered no evidence to the contrary. Citing the rule that discovering a new benefit of an old process does not make it patentable again, the Board denied claim 45.

The Board granted cancellation of claims 1–26, granted the motion as to claims 27–44 and denied it as to claim 45.

Why it matters

The decision illustrates what a successful motion looked like: narrowing amendments tied to specific features, precise written description citations, and evidence (not just argument) about why the added features were not obvious. It also shows that a narrowing limitation does not help if the substitute claim still reads on what the prior art already did. A limitation directed to a newly recognized result of an old method may be treated as inherent. See amending patent claims during inter partes review for the broader framework.

Later developments

The burden the Board applied here no longer governs. 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 patentability of substitute claims. In 2019 the Board designated Lectrosonics, Inc. v. Zaxcom, Inc., IPR2018-01129, Paper 15, precedential as motion-to-amend guidance, and the earlier Idle Free guidance was de-designated. The USPTO later adopted motion-to-amend procedures by rule; readers should check current 37 C.F.R. § 42.121. Designations can change, so check the USPTO’s list of precedential and informative decisions.

Key takeaways

• An unopposed motion to amend was granted for substitute claims 27–44 and denied for claim 45.
• Evidence that small structural changes alter repellent activity supported nonobviousness of the narrowed compound claims.
• A substitute claim that still covers the prior art’s own compound and use can fail on inherency, whatever new benefit it recites.
• The patent-owner burden applied here was later rejected in Aqua Products (2017).