By Matt Johnson

On November 27th, Acting Deputy Chief Administrative Patent Judge Jacqueline Bonilla presented a webinar on the PTAB’s proposed Motion to Amend pilot program.  In October 2018, the Patent Office published a request for comments on motion to amend practice before the PTAB.  As we discussed in this previous post, the request solicited comments on a proposed update to the motion to amend procedure, whereby the patent owner proposing an amendment would get a non-binding initial round of feedback from the Board and an opportunity to adjust its amendment prior to the oral hearing and final written decision.  Specifically, the party losing at the Preliminary Decision phase would have the opportunity to submit a Reply with new evidence, while the prevailing party would be permitted to file a Sur-reply with no new evidence.  The timeline for the revised motion to amend process and its relation to the underlying trial on the existing patent claims is provided below.

 

The PTAB has proposed implementing the revised procedure as a 1 year pilot program.  During the presentation, Judge Bonilla commented that it was highly unlikely that the pilot program would be implemented before the end of calendar year 2018 and that the pilot program would only apply to trials receiving an institution decision after the pilot effective date.

Judge Bonilla remarked that the PTAB has proposed an updated motion to amend process in detail in the hopes of receiving comments at a corresponding level of detail.  The PTAB has indicated 17 questions (see below) on which they are interested in receiving comments.  Written comments must be received by December 14, 2018.

Questions Regarding the Proposed Amendment Process and Pilot Program

  1. Should the Office modify its current practice to implement the proposal summarized above and presented in part in Appendix A1? Why or why not?
  2. Please provide comments on any aspect of the proposed amendment process, including, but not limited to, the content of the papers provided by the parties and the Office and the timing of those papers during an AIA trial.
  3. How does the timeline in Appendix A1 impact the parties’ abilities to present their respective cases? If changes to the timeline are warranted, what specific changes are needed and why?
  4. If the Office implements this proposal, should the Board prepare a preliminary decision in every proceeding where a patent owner files a motion to amend that proposes substitute claims?
  5. What information should a preliminary decision include to provide the most assistance to the parties in presenting their case? For example, is there certain information that may be particularly useful as the parties consider arguments and evidence to present in their papers, how issues may be narrowed for presentation to the Board, and/or whether to discuss a settlement?
  6. If the Office implements this proposal, should there be any limits on the substance of the claims that may be proposed in the revised motion to amend? For example, should patent owners be permitted only to add limitations to, or otherwise narrow the scope of, the claims proposed in the originally-filed motion to amend?
  7. What is the most effective way for parties and the Office to use declaration testimony during the procedure discussed above? For example, how and when should parties rely on declaration testimony? When should cross-examination of  declaration witnesses take place, if at all, in the process? At what stage of briefing should a party be able to rely on cross-examination (deposition transcripts) testimony of a witness?
  8. If a petitioner ceases to participate in an AIA trial and the Board solicits patent examiner assistance regarding a motion to amend, how should the Board weigh an examiner advisory report relative to arguments and evidence provided by a patent owner? What type of assistance or information should a patent examiner provide? Should prior art searches by examiners be limited to those relevant to new limitations added to proposed substitute claims and reasons to combine related to such limitations?
  9. Should the Board solicit patent examiner assistance in other circumstances, and if so, what circumstances? For example, should the Board solicit patent examiner assistance when the petitioner remains in the AIA trial but chooses not to oppose the motion to amend?
  10. Should a motion to amend filed under the proposed new process be contingent or non-contingent? For purposes of this question, “contingent” means that the Board will provide a final decision on the patentability of a proposed substitute claim only if it determines that a corresponding original claim is unpatentable (as in the current proposal); and “non-contingent” means that the Board will provide a final decision on the patentability of substitute claims in place of determining the patentability of corresponding original claims.
  11. If the Office implements the proposal in which the Board issues a preliminary decision on a motion to amend, as discussed above, should any additional changes be made to the current default trial schedule to accommodate the new practice?
  12. What impact would implementing the proposals above have on small or micro entities who participate as parties in AIA trial proceedings?
  13. Should the Office consider additional options for changing the timing and/or the Board’s procedures for handling motions to amend that are not covered by the proposals above? If so, please provide additional options or proposals for the Office to consider, and discuss the advantages or disadvantages of implementation.
  14. Should the Office consider not proceeding with the pilot program in AIA trials where both parties agree to opt-out of the program?

Questions Regarding Potential Rulemaking to Allocate Burden of Persuasion as Set Forth in the Western Digital Order

  1. Should the Office engage in rulemaking to allocate the burden of persuasion regarding the patentability of proposed substitute claims in a motion to amend as set forth in the Western Digital order? What are the advantages or disadvantages of doing so?
  2. If the Office continues to allocate the burden as set forth in the Western Digital order, under what circumstances should the Board itself be able to justify findings of unpatentability? Only if the petitioner withdraws from the proceeding? Or are  there situations where the Board itself should be able to justify findings of unpatentability when the petitioner remains in the proceeding? What are the advantages or disadvantages?
  3. If the Office adopts the current proposal including a preliminary decision by the Board on a motion to amend, do the answers to questions 15 and 16 change?

 

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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 over 225 PTAB cases to date. He currently serves as co-chair of Jones Day's PTAB practice.