On March 15, 2019, the USPTO published a final pilot program for motions to amend (MTA) in AIA trial proceedings in the Federal Register. 84 Fed. Reg. 9497-9507 (Mar. 15, 2019). This pilot program applies to all AIA trial proceedings instituted on or after March 15, 2019; and does not extend the statutory requirement that trials be concluded within twelve months from the Patent Trial and Appeal Board’s (PTAB) decision to institute. Patent owners are now provided with additional options for amending claims in AIA trials, many of which result in additional costs. However, through strategic planning, some of the additional costs can be minimized.
Under the AIA, a patent owner may move to amend claims challenged in an inter partes review (IPR), post grant review proceeding (PGR), or covered business method review (CBM) (collectively AIA trials). See 35 U.S.C. § 316(d). Since many of these AIA trials concern patents that are also involved in concurrent litigation, amending claims may not be an option for all patent owners. Further, most patent owner motions to amend have been unsuccessful, and that has contributed to relative disuse of that option. A recent USPTO study (through 2018 fiscal year) reported that patent owners filed motions to amend in less than 10 percent of AIA trials that have gone to completion (326 of 3599), and only about six percent of those motions to amend were granted (21 of 326). See MTA Study Installment 5 at 2-3 (March 13, 2019).
However, since the Federal Circuit’s Aqua Products decision, which placed the burden of proving unpatentability of a patent owner’s proposed motion to amend on the Petitioner, patent owners are filing more motions to amend (MTA). See Aqua Prod., Inc. v. Matal, 872 F.3d 1290 (Fed. Cir. 2017)(en banc). For example, the recent USPTO study shows that patent owners filed more that twice as many MTAs in 2018 FY (114) than in 2017 FY (50). MTA Study Installment 5 at 9.
In October 2018, the USPTO published a request for comments (‘‘RFC’’) on proposed changes to the motion to amend procedures for AIA trials. 83 Fed. Reg. 54319-54326 (Oct. 29, 2018). The goal of the proposed changes is “to provide an improved amendment practice in AIA trials in a manner that is fair and balanced for all parties and stakeholders.” Id at 54320.
Pilot Program Amendment Procedures
The pilot program incorporates feedback from the RFC. Similar to current practice, patent owners have the option of filing a motion to amend after receiving the PTAB’s decision instituting trial. This allows the patent owner to consider the PTAB’s analysis of the grounds in the petition and propose amendments designed to avoid an adverse result. Under the new procedures, patent owners also have the option of: 1) choosing to receive feedback (“preliminary guidance”) from the Board on its MTA; and 2) filing a revised MTA (rMTA) after receiving the Board’s preliminary guidance (if requested). See 84 Fed. Reg. at 9497, 9500.
If the patent owner requests to receive preliminary guidance from the Board, and not file a revised MTA, then the trial schedule follows the normal sequence with the Board’s preliminary guidance due in the six-week window between Due Date 2 (Petitioner’s Opposition to the MTA) and Due Date 3 (PO Reply to the Opposition) as shown in the timeline below:
84 Fed. Reg. at 9506, Appendix 1A (PO Reply Timeline) (annotated).
However, if the patent owner decides to further amend claims by filing a revised MTA, the Board will provide an updated scheduling order to allow for the petitioner to file an opposition to the rMTA and to postpone the oral hearing by a month (i.e., from 9 months to 10 months after institution).
84 Fed. Reg. at 9507, Appendix 1B (Revised MTA Timeline) (annotated).
The pilot program provides for additional briefing, expert declarations, and depositions which will increase the cost and complexity of AIA trials. Parties can minimize this additional cost with proper planning.
One way that patent owners may significantly reduce costs, and the Board’s burden, is by filing a non-contingent MTA. With contingent MTAs, the parties argue different claim scope in parallel briefing. The USPTO clarified that “[u]nder the pilot program, consistent with current practice, patent owners may continue to choose whether MTAs (both initial and revised) are contingent or non-contingent.” 84 Fed. Reg. at 9505. However, “if it appears, in view of actual experience, that there are sufficient reasons for requiring MTAs to be non-contingent, the Office may revisit this issue and modify the pilot program accordingly.” Id. Thus, if the institution decision strongly favors petitioner’s challenge to the original claims, patent owner should consider filing a non-contingent MTA to simplify the trial and reduce cost.
Another way that both parties may minimize potential costs associated with efforts to extend the trial schedule is to plan depositions in advance. Both parties may file an expert declaration with each brief, except sur-replies. See 84 Fed. Reg. at 9500. The new procedures will result in additional depositions within a relatively short period of time, resulting in potential scheduling conflicts. For example, many experts are full-time professors who moonlight as technical experts. The Board is reluctant to extend the statutory requirement that trials be concluded within twelve months from the decision to institute. Therefore, the Board expects each party to make its declarant available for deposition soon after filing a declaration and encourages the parties to meet and confer to schedule depositions in advance. See 84 Fed. Reg. at 9500, 9501. Accordingly, if patent owner files an MTA in an AIA trial, the parties should meet and confer as soon as possible to schedule depositions for the remainder of the trial to avoid scheduling conflicts and resultant costs.