Patentees Fail to Adjust to Motion Practice

As final written decisions in Inter Partes Review (IPR) and Covered Business Method (CBM) proceedings begin to issue from the USPTO’s Patent Trial & Appeal Board (PTAB), it is clear that patentees have yet to master the process of amending their patents in these new proceedings. The primary disconnect appears to be the failure of patentees to recognize that an amendment in a PTAB proceeding is proposed by motion; an amendment is not entered as a matter of right.

Unless prosecution has been closed in the examination of a patent application or patent reexamination, a patent applicant/patentee is free to present virtually any number and character of claim amendments supported by their specification. Outside of the prohibition against broadening, or amendments relating to a patentably distinct inventions, a patent applicant/patentee is not required to do much else but present their new claims for examination. On the other hand, a motion to amend before the PTAB requires the movant (i.e., patentee) to demonstrate entitlement to the requested relief. This demonstration requires more than most patentees are accustomed to providing the USPTO.

The PTAB requires some similar showings in a motion to amend as would be provided in a prosecution context. For example, the claims must have support in the patent specification and must arguably distinguish over the art of record. But, these components of motions to amend are not at all controversial. Instead, the requirements that a patentee “set forth what it [knows] about the level of ordinary skill in the art, and what was previously known, regarding each feature it relies and focuses on for establishing patentability of its proposed substitute claims” are quite surprising to patentees. Idle Free Systems, Inc. v. Bergstrom, Inc., Case IPR2012-00027 (PTAB, Jan. 7, 2014).

These PTAB motion requirements put patentees in an altogether unfamiliar and uncomfortable position. That is, PTAB amendment practice is the polar opposite of patent examination/reexamination amendment practices. Rather than presenting claims to the Office for examination where the burden falls on the USPTO to deny the claims as unpatentable, the patentee must first advocate for a pseudo-presumption of non-obviousness just to have their amendment entered.

For those interested in amendment proceedings before the PTAB, I will be participating in a mock IPR oral argument (including such issues) this afternoon in Crystal City, VA. The workshop is the second day of the International Intellectual Property Institute (IIPI) program entitled AIA Post-Grant Practice Conference. The mock arguments will be heard by actual Administrative Patent Judges (APJs) of the PTAB.

I hope to see you there.