By Sue Gerber and Matt Johnson

On December 4, 2019, the PTAB hosted the last installment for 2019 in its “Boardside Chat” webinar series.  The program, presented by Deputy Chief Judge Jacqueline Bonilla and Lead Administrative Patent Judge Jessica Kaiser, addressed Motion to Amend practice in IPR proceedings, particularly the recent developments in this area.  The program focused on three main topics:  the proposed rulemaking on allocations of burden when moving to amend, the motion to amend pilot program, and other amendment options through reissue and reexamination.

First, the panel noted that the proposed rulemaking on the allocation of burden was published October 22, 2019, and the period for public comment closes on December 23, 2019.  Under the proposed rule, the Patent Owner carries the burden of showing that a motion to amend complies with certain statutory and regulatory requirements, and the Petitioner carries the burden of showing that the substitute claims proposed by the Patent Owner would be unpatentable.  Further, the proposed rule allows the Board, in the interests of justice, to exercise its discretion to grant or deny the motion for any reason supported by the evidence of record.  The presenters noted that these proposals simply make clear the burdens that have previously been imposed in practice by the Board.

The proposed rule gives the Board substantial discretion in ruling on motions to amend.  The Board may determine that a motion complies with the requirements, even if not expressly stated by the Patent Owner, when there is easily identified and persuasive evidence of compliance and the Petitioner has been given an opportunity to be heard.  The PTO expects this will happen only in rare circumstances.  Similarly, the Board may deny a motion to amend in the interests of justice, even when Petitioner does not oppose the motion or fails to carry its burden.  This might occur when there has been a settlement or the record contains easily identified and persuasive evidence of unpatentability, notwithstanding the Petitioner’s failure to carry its burden.  The Board expects that it will rarely need to independently justify a determination of unpatentability.

Second, the panel discussed the motion to amend pilot program.  This program applies to all AIA trials instituted after March 15, 2019.  It gives a Patent Owner two options that were not previously available before the pilot program:  1) the Patent Owner may ask the Board to review its motion to amend and provide preliminary guidance (“PG”) about the merits of its motion, and/or 2) the Patent Owner may elect to file a revised motion to amend after receiving either the Petitioner’s opposition and/or the Board’s PG.  Option 2 is not dependent upon a Patent Owner’s exercising Option 1.  The first PG under the pilot program was issued on October, 2019.  To date, the panel reported that about 30 motions to amend have been submitted under the pilot program, in about 26 of them, the Patent Owner has requested PG.  The Board has issued about a dozen PGs.  Of those cases where a revised motion to amend could be filed, all but one elected to filed a revised motion.

The panel stressed a few key points about the pilot program.

  • The Board will not issue PG unless the Patent Owner requests it. If the Patent Owner does not elect either of the two new options, the procedure is unchanged from prior practice, and the schedule is the same.  If an revised motion to amend is filed, however, the schedule will be adjusted to allow time to fully brief the revised motion.  The parties may stipulate to move dates, but they must leave time for the PG, which takes about 4 weeks.
  • The PG is a preliminary, non-binding initial assessment of the MTA based upon the record so far. The goal of the PG is to provide information to the parties, but it is not intended to be final or to contain the level of detail found in an Institution Decision.  The Board will not entertain rehearing requests from the PG.
  • Based on the opposition to the motion to amend and/or PG, the Patent Owner has three options. It can 1) reply to the opposition to the original motion to amend and PG (if requested), 2) file a revised motion to amend, and 3) do nothing.  If it chooses option 1, there will be no change to the scheduling order, the Petitioner may file a surreply six weeks later, and the oral hearing will take place at about nine months.  If it chooses option 2, the schedule will be adjusted, the oral hearing will take place at about 10 months, and the Final Written Decision will address only the substitute claims at issue in the revised motion.  If the Patent Owner chooses option 3 and no PG was requested, there will be no further briefing.  If there was a PG, the Petitioner may file a reply to the PG that responds only to the PG and the Patent Owner may file a surreply, however, no new evidence maybe submitted with either paper.
  • The revised motion to amend is a stand-alone brief; the Board will not refer back or incorporate arguments or information from the original motion.

Third, the panel discussed reissue or reexamination during pending AIA proceedings.  This discussion was a follow up to the notice of proposed rulemaking from April 22, 2019, which provided a summary of current practice and summarized factors considered when deciding whether to stay or suspend proceedings in favor of a pending AIA proceeding and when to lift a stay or suspension.  Under the current practice, as long as some of the claims of a patent are still live (i.e., no certificate of cancellation or Federal Circuit mandate has issued), reissue and reexamination is still available.  The panel highlighted that there are pros and cons to each of the review vehicles—including whether the review proceedings can be stopped once initiated—that the Patent Owner and Petitioner should consider.  The options are described on the PTO webside and can be found through a link on the PTAB webpage entitled, “Notice regarding options for amendments through reissue or reexamination.”

The handouts from the webinar and a link to the video are currently available here..

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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.

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