In a recent ruling, the U.S Court of Appeals for the Federal Circuit reaffirmed its stance that amendments to claims during an inter partes review (IPR) proceeding should not broaden the claim’s scope in any regard, in comparison to the original claims. This rule holds true even if the new claim is generally narrower than its predecessor. The ruling has significant implications for patent holders considering making amendments during IPR proceedings.
The case in question was Sisvel International S.A. v. Sierra Wireless, Inc., et al., Case Nos. 22-1387; -1492, delivered by the Federal Circuit on Sept. 1, 2023. The judges on the panel were Prost, Reyna, and Stark.
The appellant, Sisvel International, had been denied a motion to amend claims during an IPR proceeding at the Patent Trial & Appeal Board. The main reason for the board’s denial was that Sisvel’s proposed claim was broader in some respects than the original claims, thus considering it an improper amendment.
This ruling reinforces the concept that claim amendments should refine and narrow the claim’s scope, not expand it. Legal professionals, particularly those working in patent law, should keep this principle in mind when considering claim amendments during IPR proceedings. This approach centers on the philosophy that “less is more” in the context of IPR claim amendments, focusing on precision rather than breadth.
The ruling highlights the ongoing efforts of the federal courts and the Patent Trial & Appeal Board to encourage thoughtful, precise claims that focus on unique and innovative aspects of a patent. It serves as a clear message to patent holders and legal professionals on the importance of careful claim crafting and strategic amendment considerations during IPR proceedings.