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  • The opinions, commentary and characterizations provided to this online forum by the authors and moderators are provided for encouraging discussion, thought and debate on important post grant issues. These postings are in no way representative of the opinions of Oblon Spivak et al., or its clients.

Improving PTAB Motion to Amend Practice

Posted On: Apr. 24, 2014   By: Scott A. McKeown
PTAB amendmentTweaks to Strict Motion Guidelines Are in Order

Since the passage of the America Invents Act (AIA) the Patent Trial & Appeal Board (PTAB) has successfully fulfilled it’s charge as a speedy, cost effective alternative to patent litigation. The PTAB has been so effective in cancelling patent claims, based on the limited, preliminary results, that the Board is being criticized as anti-patent. As discussed earlier this week, this criticism is unfounded as the USPTO will always be a significantly more patent challenger friendly forum relative to the district court. Still, there is another aspect of the early statistics that patentees find of equal concern, the perceived impossibility of successfully amending the claims of a patent during a PTAB challenge.

To date, the PTAB has not granted a single motion to amend.

The PTAB properly points out that that there is a very small sample of cases in which amendment has even been attempted, and a successful motion is expected to be issued shortly. Yet, the current statistical situation (as transient as it may be), coupled with the fact that the strict motion to amend guidelines have always been viewed unfavorably, is resulting in a bit of a black eye. This at a time when maintaining the BRI standard in PTAB proceedings is being justified based upon the ability to amend.

To the Board’s credit, the current round table initiative is designed to receive feedback for the purpose of revising some rules of practice. To this end, below are some changes that I believe would improve patentee prospects for amendment while maintaining the PTAB’s mission to expeditiously decide these important, but complex issues of patentability.

The guidelines for motions to amend are now well known. The single biggest complaint in satisfying the various burdens and requirements is the allotted page count. A typical patentee response in IPR  includes 60 pages for responding to the applied grounds, and an optional 15 pages for motions to amend. Both filings must be double spaced, 14 point font. The typical motion to amend is contingent, thus, 75 pages in total are submitted to the Board. Yet, it is very difficult to address all amendment burdens/issues in 15 pages of double spaced text; especially as the claim text itself also counts toward the 15 page limit.

While the simple remedy would be to increase page count for motions to amend, the Board also needs to be mindful of their 12 month statutory mandate for deciding the challenge. To balance the needs of patentees and the Board, there are a few, relatively simple fixes that come to mind.

- Allow claims to accompany the motion as an appendix (i.e., so that page count is not impacted)
This solution is straight forward enough. Given the 1-for-1 requirement for substituted vs. cancelled claims, not counting the pages of actual claim text toward the 15 page limit is unlikely to adversely impact PTAB scheduling/workload.

- Flexibly allocate additional pages where a show of attempted compliance is made
To date, the PTAB has been very strict with requests for additional pages, granting only 2-3 pages beyond the 15 page limit. (even in cases where the 60 page response was waived). This is another practice that can easily be changed without impacting trial schedules. A 5-10 page extension is reasonable in many instances. Of course, this relaxing of standards would burden the Board with additional requests for teleconferences. For this reason, the solution below seems to make the most sense from an agency perspective.

– Allow the patentee flexibility in page allocation across filings
As noted above, a typical contingent amendment filing includes 75 pages (60 response + 15 motion to amend). If a patentee were, for example, able to use 40 pages for the response and 35 pages for their amendment (75 total), the PTAB would likely see increased efficiency by way of fewer conference calls on the topic of page limits. To be sure, patentees will argue that the full 60 pages are needed for the patent owner response. Yet, in my experience, such is rarely the case where a serious attempt at amendment is pursued.

Rescind/Modify Rule 42.73(d)(3)(i)
This “patentee estoppel” forecloses all patentably indistinct amendments before the USPTO once an adverse judgement is entered in a PTAB post grant patent challenge. Given the limited opportunity to amend before the PTAB, this rule is unbalanced. Perhaps a modification providing for a safe harbor to those patentees that choose not to amend before the PTAB would strike a fairer balance? Thereafter, a patentee could seek to remodel their claim structure via patent reissue, reexamination, or supplemental examination, free from estoppel concerns.

The PTAB plans to request formal feedback in July via federal Register Notice, be sure to get out to a round table in your area.

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