Motion Practice Requirements Emphasized by Board

The rules of the new patentability trials of the America Invents Act (AIA) are designed to ensure timely resolution within the statutorily mandated 12 month time frame. In particular, the Patent Trial & Appeal Board (PTAB) fashioned their new rules to prevent the notorious delays and complications of the previous inter partes patent reexamination system. One way in which the new AIA post grant proceedings are vastly different from the previous inter partes patent reexamination model is the manner in which claim amendments may be proposed.

In the previous inter partes reexamination system, any number of amended claims could be added or submitted prior to the close of prosecution before the examiner. There was no numerical limit on the number of claims that could be submitted. In fact, it was not uncommon practice for patentees to submit hundreds of new claims. By doing so, patentees made it more difficult for the third party to respond to all issues within their 30 day period, and within page limits. Likewise, the addition of such extensive amendments made examiner/APJ processing all the more tedious and time consuming.

In the new AIA proceedings, Inter Partes Review (IPR) and Post Grant Review, the PTAB provides for a reasonable number of substitute claims. 37 C.F.R. § 42.121/221. The “reasonable” aspect has been explained as a one-to-one correspondence in the typical case. In addition, claim amendments must be presented by motion, in a particular manner. Not surprisingly, patentees are demonstrating that old habits die hard.

In recent weeks the PTAB has issued several decisions cautioning patentees as to the requirements for motions to amend, and the requirement that the patentee first confer with the panel assigned to the trial before filing the motion. In addition to the limited number of claims that may be proposed by motion, the PTAB is also mindful that the the claims must be proposed to advance the contested proceeding. For this reason, the motion must include very specific information.

Last week, in IPR2012-00005, (here) the Board explained that 42.121(b)1 requires citations for written support in the specification for substitute claims and, 42.121(b)(2) requires citations for support to parent applications.

Then again yesterday, in a more extensive expanded panel Order, the PTAB outlined the requirements 42.121(a)(2) of a contingent claim amendment, the requirement to confer with the Board prior to filing, and the requirements to identify the patentable distinctions in IPR2012-00027. (here) The Board explained relative to patentable distinctions that:

A patent owner should identify specifically the feature or features added to each substitute claim, as compared to the challenged claim it replaces, and come forward with technical facts and reasoning about those feature(s), including construction of new claim terms, sufficient to persuade the Board that the proposed substitute claim is patentable over the prior art of record, and over prior art not of record but known to the patent owner. The burden is not on the petitioner to show unpatentability, but on the patent owner to show patentable distinction over the prior art of record and also prior art known to the patent owner. Some representation should be made about the specific technical disclosure of the closest prior art known to the patent owner, and not just a conclusory remark that no prior art known to the patent owner renders obvious the proposed substitute claims.

Note that the Board provided the patentee with a second chance to correct the missteps above, but, such free passes will likely dry up in the near future as PTAB practice matures.