On October 22, 2019, the United States Patent and Trademark Office (“USPTO”) proposed changes to the rules of practice for amending patents in AIA trial proceedings before the Patent Trial and Appeal Board (“PTAB”). The changes would apply to inter partes review (“IPR”), post-grant review (“PGR”), and covered business method patent review (“CBM”). The rules make clear that a patent owner bears the burden of persuasion in connection with certain statutory and regulatory requirements for a motion to amend, and a petitioner bears the burden of persuasion in connection with the patentability of substitute claims proposed therein.
Specifically, the USPTO proposes adding a new paragraph (d) to each of 37 C.F.R. §§ 42.121 and 42.221:
(d) Burden of Persuasion. On a motion to amend:
(1) A patent owner bears the burden of persuasion to show, by a preponderance of the evidence, that the motion to amend complies with the requirements of paragraphs (1) and (3) of 35 U.S.C. [316/326](d), as well as paragraphs (a)(2), (3), (b)(1), and (2) of this section;
(2) A petitioner bears the burden of persuasion to show, by a preponderance of the evidence, that any proposed substitute claims are unpatentable; and
(3) Irrespective of paragraphs (d)(1) and (2) of this section, the Board may, in the interests of justice, exercise its discretion to grant or deny a motion to amend for any reason supported by the evidence of record.
In its commentary explaining the proposed rule change, the USPTO explained that, pursuant to the America Invents Act (“AIA”), during the course of an IPR, PGR, or CBM, a patent owner may move to amend a patent by cancelling any challenged patent claim or by proposing a reasonable number of substitute claims for each challenged claim. Previously, the USPTO placed the burden of showing the patentability of proposed substitute claims on the movant, i.e., on the patent owner moving to amend its claims.
Pursuant to the new proposed rules, the USPTO makes clear that this burden will be on the petitioner, which brings the rules of practice in post-grant trial proceedings in line with the Federal Circuit’s 2017 en banc decision in Aqua Products (discussed here), and with the PTAB’s recent decision in Lectrosonics, Inc. v. Zaxcom, Inc., Cases IPR2018-01129, 01130 (P.T.A.B. Feb. 25, 2019) (Paper 15) (Precedential).
Finally, the proposed rules clarify that, irrespective of the burdens of persuasion, the PTAB may, in the interests of justice, grant or deny a motion to amend “for any reason supported by the evidence of record.” Accordingly, even in a situation where a party has not met its burden, the PTAB may, in the interests of justice, reach a determination regarding patentability based on the entirety of the evidence. The USPTO cautions, however, that the PTAB is likely to exercise its discretion sparingly.
The USPTO is accepting public comments on the new rules until December 23, 2019. We will continue to monitor any further modifications and/or clarifications on the new rules and will provide an update as appropriate.