By: Matt Johnson

On Monday, the PTAB issued its fourth installment of its ongoing motion to amend study, providing details on motions to amend filed and decided through March 31, 2018.  Patent owners have filed a motion to amend in 305 of the 3,203 completed trials (11%), and in 56 of the 725 pending trials (8%)—a total of 361 motions to amend.  The Board decided a motion to amend requesting to substitute claims in 189 of the 305 completed trials (62%). In the remaining 116 completed trials (38%), the motion to amend: (a) requested solely to cancel claims (20 or 7%), (b) was rendered moot because the panel of judges found the original claims patentable or because the panel of judges already decided a motion to amend proposing the same substitute claims (35 or 11%), or (c) was not decided because the case terminated prior to a final written decision (61 or 20%).

In the 189 actual decisions on motions to amend, the Board granted or granted-in-part and denied-in-part a motion to amend in 18 of the 189 trials (10%) and denied a motion to amend in 171 of the 189 trials (90%).  The Board’s final written decisions identified at least one statutory ground of unpatentability or found that the patent owner failed to satisfy the statutory requirements for a motion to amend under 35 U.S.C. § 316(d) in 88% of trials or 160 trials. The Board’s decisions in most of those cases are akin to an examiner rejecting a proposed amended claim because it is anticipated, obvious, not adequately described in the written description, indefinite, or directed to non-statutory subject matter. In the remaining 22 (12%) trials, the Board based a denial solely on procedural reasons related to the requirements for a motion to amend.  Interestingly, no new procedural rejections of motions to amend have been made in the last two years.

Regarding rates of filing, the report shows an increase in the number of motions to amend filed in fiscal year 2018, when compared to other fiscal years. The number of motions to amend filed through the first half of fiscal year 2018 (54) exceeds the number of motions to amend filed for the entire fiscal year 2017 (50), and is approximately the same as the number of motions to amend filed for the entire fiscal year 2016 (56).  This increase is likely based substantially on the Federal Circuit’s en banc decision in Aqua Products, Inc. v. Matal, 872 F.3d 1290 (Fed. Cir. 2017). See Petitioners Bear Burden Of Proving Claims Amended During IPR Unpatentable . . . For Now.  In line with that decision, the PTAB will not place the burden of persuasion on a patent owner with respect to the patentability of substitute claims presented in a motion to amend. See PTAB Publishes Aqua Products Guidance Regarding Motions to Amend.

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