IPR Motion to Amend Addressing Prior Art “Individually” Insufficient Show Patentability of Substitute Claims

In a final written decision, the Board denied the patent owner's motion to amend claims on the grounds that the motion failed to demonstrate the patentability of the substitute claims over the prior art. "[The expert's] testimony . . . is limited to anticipation issues, and fails to demonstrate sufficiently that the substitute claims are nonobvious. . . . Although [he] concludes that the substitute claims would not have been obvious to one of ordinary skill in the art, [his] analysis merely discusses how each cited prior art reference individually does not disclose the features added in the substitute claim. Such a patentability analysis is insufficient to demonstrate nonobviousness, because an analysis of whether the subject matter of a claim would have been obvious 'need not seek out precise teachings direct to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.'"

Petition for Inter Partes Review by Research In Motion Corporation, IPR2013-00016 (PTAB February 25, 2014, Order) (Chang, APJ)