On October 29, 2018, the USPTO published a request for comments on proposed procedures designed to make it easier for patent owners to amend claims in challenged patents during inter partes review proceedings (IPR) and other AIA post grant trials. The Office stated that, “The goal of the proposed amendment process . . . is to provide an improved amendment practice in AIA trials in a manner that is fair and balanced for all parties and stakeholders.” 83 Fed. Reg. 52319, 54320 (Oct. 29, 2018). The proposal introduces new procedures without extending the statutory requirement that trials be concluded within twelve months from the Patent Trial and Appeal Board’s (PTAB) decision to institute.
Under the AIA, a patent owner may move to amend claims challenged in an IPR, post grant review proceeding (PGR), or covered business method review (CBM). See 35 U.S.C. § 316(d). In practice, however, most patent owner motions to amend have been unsuccessful, and that has contributed to relative disuse of that option. A recent USPTO study reported that patent owners file motions to amend in less than 10 percent of AIA trials, and only five percent of those motions to amend are granted. In addition, the U.S. Court of Appeals for the Federal Circuit recently rejected the USPTO’s practice of placing on patent owners the burden of proving that proposed amended claims are patentable. See Aqua Prod., Inc. v. Matal, 872 F.3d 1290 (Fed. Cir. 2017)(en banc).
New Proposed Amendment Procedures
The USPTO proposes new procedures that would give patent owners feedback from the PTAB on proposed amendments prior to the final written decision, and an opportunity for a second chance to amend the claims.
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 proposed procedures, following an opposition by the petitioner, the PTAB panel then would render a preliminary decision on whether the proposed amendment satisfies the requirements for amendment under Section 301(d):
The preliminary decision would provide information relating to whether the motion to amend meets the statutory requirements of 35 U.S.C. 316(d) or 326(d) and the regulatory requirements of 35 CFR 42.121 or 42.221, and information relating to the patentability of the proposed substitute claims. To meet statutory and regulatory requirements, a motion to amend must, among other things: propose a reasonable number of substitute claims; propose substitute claims that do not enlarge claim scope or introduce new matter; respond to a ground of unpatentability involved in the trial; and set forth written description support for each substitute claim.
83 Fed. Reg. at 54322.
If the PTAB’s preliminary decision is that the proposed amendment should not be allowed, the patent owner would have one opportunity to propose revised amended claims. In that event, the petitioner would be allowed to file an opposition, the patent owner would then be allowed a reply, and the petitioner would be allowed a sur-reply.
If, on the other hand, the PTAB’s preliminary decision is to allow the amendment, the petitioner would have the right to file a reply to the decision and the patent owner would be allowed a sur-reply.
In both situations, the Board’s preliminary decision would not be binding in the final outcome, and the merits of the amendment would be addressed at the oral hearing.
One issue addressed by the proposed procedures is the treatment of a motion to amend when the petitioner discontinues participation, such as when the parties reach a settlement. In that case, at the option of the PTAB, the panel may enlist the assistance of an examiner from the USPTO’s Central Reexamination Unit (CRU) to conduct a prior art search and prepare a report on pertinent art. The CRU examiner would not reach any legal conclusions on the patentability of proposed amended claims, but the PTAB panel could use the search report to aid its determination of patentability.
A second issue identified in the USPTO’s notice is whether a patent owner can make its motion to amend contingent on an unfavorable trial outcome on the original claims. Under current practice, patent owners generally file a motion to amend that is contingent, so that the claims are not amended if the Board determines that the original challenged claims are not unpatentable. The USPTO notice does not indicate whether contingent motions would be permitted under the new procedures, and specifically requests public comments on that issue. See 83 Fed. Reg. at 54325.
The USPTO’s notice also seeks comment on the Board’s procedures for allocating the burden of showing unpatentability of a proposed amended claim on the petitioner. See Western Digital Corp. v. SPEX Techs., Inc., Case IPR2018–00082 (Paper 13) (PTAB Apr. 25, 2018)
The USPTO has requested comments on the proposals through December 14, 2018. In addition, the USPTO announced that it may initiate a pilot program applying the new procedures “in every AIA trial proceeding involving a motion to amend where the Board issues a decision to institute a trial after the implementation date of the pilot program.” 83 Fed. Reg. at 54324. Further, “[o]nce implemented as a pilot program, the new amendment procedure would be the only option available for amending claims in AIA proceedings.” Id, emphasis added.
One potential concern arising from the USPTO’s proposal is the tight time constraints placed on motions to amend and responses. AIA post grant proceedings are subject to a statutory requirement that the Board issue a final written decision within 12 months following institution. In order to interject the motion to amend procedures into an already-tight timeline, the USPTO proposes that motions to amend be made within 1.5 months of the institution decision, petitioner oppositions be filed within an additional 1.5 months, and the PTAB’s preliminary decision on the motion to amend issue within an additional one month. Follow-on revised motions or supplemental briefs would be completed over the next four months, concluding as short as 1.5 months prior to the oral hearing. This additional layer of motion practice and briefing, which would coincide with motions and discovery under the current procedures, may increase the complexity of AIA trials and result in additional costs.
These tight time constraints, coupled with the proposed immediate implementation of the new procedure as the only option for existing pre-institution IPRs, and the possibility of amendments not being contingent, could be very challenging for patent owners in existing IPRs. For example, many patent owners focus on procedural arguments, rather than merit-based arguments, in their patent owner preliminary responses (POPRs). If all of these possibilities become reality (i.e., immediate implementation of non-contingent amendments), then patent owners who focused on such procedural based arguments in recent POPRs could be forced to amend claims fast with little feedback from the PTAB on merit-based arguments.