In Toyota Motor Corporation v. American Vehicular Sciences LLC, IPR2013-00419, Paper 32 (March 7, 2014), the Board provided detailed guidance on motions to amend.  Considering that not a single motion to amend has been granted, the patent owners will not doubt appreciate the effort, but the fact that the explanation of the rules itself takes 5 pages of 14-point double spaced type, illustrates the near impossivility of preparing an acceptable motion to amend, including the text of the amended claims, in tje fifteen pages alotted.

1. There should be no “amending in place.” Any claim with a changed scope, subsequent to the amendment, should be included in the claim listing as a proposed substitute claim, and have a new claim number.

2. A motion to amend claims may only cancel claims or propose substitute claims. The request to cancel claims will not be regarded as contingent.

3. Each proposed substitute claim must be reproduced in the claim listing, and the claim listing should be set forth in the motion itself, and not a claim appendix. For each proposed substitute claim, the motion must show, clearly, the changes of the proposed substitute claim with respect to the original patent claim which it is intended to replace. No particular form for showing changes is required, but the Board suggests the use of brackets to indicate deleted text and underlining to indicate inserted text.

 4. Although there is a presumption that only one substitute claim is needed for each original patent claim, this does not mean the patent owner is in compliance so long as the total number of claims before and after the amendment remain the same. The requirement is viewed on a per claim basis.

5. A proposed substitute claim should be responsive to the ground of unpatentability applicable to the original patent claim for which it is a substitute. 37 C.F.R. § 42.121(a)(2)(i). Generally, that means the proposed substitute claim should not eliminate any feature or element of the original patent claim which it is intended to replace. If there is a special circumstance to justify deviation from that general rule, the motion should provide adequate and persuasive explanation. A proposed substitute claim may not enlarge the scope of the patent claims. 37 C.F.R. § 42.121(a)(2)(ii).

6. The patent owner bears the burden of establishing that it is entitled to the relief requested in the motion to amend. 37 C.F.R. § 42.20(c). However, explaining patentability over references applied by the petitioner against the original patent claims is not the “main event”. The patent owner must show patentability over the prior art in general, and not just over the references applied by the petitioner against the original patent claims.  The motion should provide sufficient underlying facts regarding any feature added by the proposed substitute claim. For instance, it should be revealed whether the feature was previously known anywhere, in whatever setting, and whether or not the feature was known in combination with any of the other elements in the claim. If any such combination was known, the motion should explain the surrounding facts in that regard, and why it would not have been obvious for one with ordinary skill in the art to adapt that knowledge for use with the rest of the claim elements.

The patent owner is not expected to know everything that a hypothetical person of ordinary skill in the art is presumed to know, but the patent owner is expected to reveal what it does know, to the extent that it is relevant. There should be a discussion of the ordinary skill in the art, with particular focus on the feature added to provide the basis of patentable distinction. The discussion should be specific about the technical knowledge pertaining to the feature added, including whether there are textbooks or conventional practices relating to the feature, and what basic skillset would be possessed by one with ordinary skill in the art. A conclusory statement to the effect that the closest prior art are the references in the record is not meaningful.

7. In the motion to amend, the patent owner must show written description support in the original disclosure of the application as filed for each proposed substitute claim. 37 C.F.R. 42.121(a)(2)(ii). 　It is inadequate to show support for just the feature added by the proposed substitute claim, the patent owner must show written description support for the entire combination claimed.

8. The patent owner should provide a proposed claim construction of any new term used in a proposed substitute claim, the meaning of which reasonably can be anticipated as subject to dispute.　 If a proposed substitute claim adds a means-plus-function element, the corresponding structure, material, or acts described in the specification should be identified. If a term should be given its plain and ordinary meaning, it should be expressly defined in the motion, together with the supporting evidence.