PTAB Order Provides Guidance on Motions to Amend in IPRs

On October 30, the PTAB issued an Order setting forth several tips for satisfying the requirements for a motion to amend claims in an IPR.  See Corning Optical Communications RF, LLC v. PPB Broadband, Inc., IPR2014-00441 (PTAB) (Paper 19).  In particular, the PTAB recommended that: (1) when a new term is added to the claims by way of a motion to amend and it has a meaning that can reasonably be anticipated as being subject to dispute, the patent owner should provide a proposed claim construction of that term in its motion; and (2) where the feature or combination of features relied upon for patentability in a proposed claim was previously known, the patent owner should explain why it would not have been obvious for a skilled artisan to have adapted that knowledge for use with the other claim elements.  In this regard, the PTAB provided some examples of appropriate discussion of the level of skill in the art in explaining why features of the amended claims would not have been obvious.  Also, despite indications to the contrary in other earlier IPRs, the PTAB authorized proposed claim amendments to be placed in an appendix so that they do not count towards the 15-page limit of a motion to amend. Thus, while it remains statistically unlikely that the PTAB will grant a motion to amend, this decision provides helpful insight into the types of arguments and information the PTAB is looking for when considering whether to grant a motion to amend in an IPR.