By Andrea Beathard and Matt Johnson

On January 28, 2021, the PTAB held a Boardside Chat webinar at which three PTAB judges discussed four recent developments related to America Invents Act (“AIA”) trials.

First, Vice Chief Judge Michael Tierney discussed what he called the “SAS Rules Package”— a United States Patent and Trademark Office (“USPTO”) final rule issued on December 9, 2020 that made three revisions to the rules governing the PTAB’s institution decisions in AIA trial proceedings.  The first revision implements the U.S. Supreme Court’s holding in SAS Institute Inc. v. Iancu, 138 S. Ct. 1348 (2018)—that when the PTAB is deciding whether to institute inter partes review (“IPR”), the PTAB has a binary choice between instituting review of all the claims challenged (and all of the grounds of unpatentability) in the petition or instituting review of none of the claims.  The PTAB, therefore, must now institute all or none of the claims challenged in any IPR, post grant review, or covered business method petition pending before it.  The second revision conforms the PTAB’s rules to the current standard practice of providing for automatic sur-replies to petitions.  The third revision eliminates “the presumption that a genuine issue of material fact is viewed in the light most favorable to the petitioner for purposes of deciding whether to institute a review.”  Slide 9.  The PTAB will now look at the totality of the evidence when deciding whether to institute review.

Second, Deputy Chief Judge Jacqueline Bonilla discussed the USPTO’s final rule issued on December 21, 2020 that codified the PTAB’s existing practices for burdens of persuasion in motions to amend.  The rule assigns to the patent owner the burden of showing by a preponderance of the evidence that a motion to amend complies with “certain statutory and regulatory requirements.”  Slide 14.  And the rule assigns to the petitioner the burden of showing by a preponderance of the evidence that any “proposed substitute claims are unpatentable.”  Slide 16.  The rule also provides that, “[i]rrespective of the burdens and the adversarial nature of the proceeding, the [PTAB] may, in the interests of justice, exercise its discretion to grant or deny a [motion to amend], but only for reasons supported by readily identifiable and persuasive evidence of record in the proceeding.”  Slide 17.  Judge Bonilla noted that the PTAB will exercise its discretion under this last provision only in rare circumstances.

Third, Lead Judge Kalyan Deshpande discussed five designated PTAB decisions issued in December 2020.  In two of those decisions, the PTAB addressed its institution analysis under the Fintiv factors.  First, in Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 at 18–19 (Dec. 1, 2020), the PTAB found that a petitioner’s broad stipulation—that, if the PTAB instituted IPR, the petitioner would not pursue in the district court litigation “any ground raised or that could have been reasonably raised in an IPR” —weighed strongly against exercising discretion to deny IPR under the fourth Fintiv factor (“overlap between issues raised in the petition and in the parallel proceeding”).  Second, in Snap, Inc. v. SRK Technology LLC, IPR2020-00820, Paper 15 at 9 (Oct. 21, 2020), the PTAB held that a district court’s grant of a stay pending an IPR weighed strongly against exercising discretion to deny IPR under the first Fintiv factor (“whether the court granted a stay or evidence exists that one may be granted if a proceeding is instituted”).

Finally, Judge Tierney discussed the USPTO’s January 6, 2021 memorandum that states that the PTAB will apply the Nautilus indefiniteness standard (used by district courts) in AIA trial proceedings.  The PTAB will no longer apply the Packard indefiniteness standard in AIA trial proceedings, but the USPTO will continue to follow Packard in the examination context.  Judge Tierney noted that this change will not make a substantive difference in practice because no real substantive difference exists between the Nautilus and Packard indefiniteness standards.

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Matt Johnson is one of the Firm's primary contacts on practice before the PTAB. Matt consults on nearly every one of Jones Day's nearly 400 PTAB cases to date. He currently serves as co-chair of Jones Day's PTAB practice.