In LKQ Corporation v. Clearlamp, LLC (IPR2013-00020, Paper 73), the Patent Trial and Appeal Board upheld the validity of 12 of 24 claims in U.S. Patent 7,297,364, a patent concerning a method for the refurbishing of lamp surfaces in a vehicle so as to remove surface wear and scratches. The result of this decision reinforces the strict and exacting standard of patentability in IPR proceedings, where patent claims survive at a very low rate.
A recent decision by the Patent Trial and Appeal Board (“Board”) in adidas v. Nike, IPR2013-00067, suggests stringent requirements to establish patentability over other known prior art when amending claims in an inter partes review. Paper No. 60 entered April 28, 2014. The Patent Owner, Nike, filed a motion to amend to add substitute claims and was successful in persuading the Board that its substitute claims did not enlarge the scope of the original claims and defined the metes and bounds of the invention under 35 U.S.C. §112, second paragraph. However, the motion was denied because the Patent Owner failed to demonstrate that the substitute claims are patentable over the “other known prior art.”