Burden of Persuasion to Demonstrate Unpatentability on Petitioner

The United States Patent and Trademark Office (USPTO) has issued a Notice of Proposed Rulemaking (NPRM) to allocate the burdens of persuasion on motions to amend in AIA trial proceedings before the Patent Trial and Appeal Board (PTAB).  The NPRM proposes that a petitioner bears the burden to show the unpatentability of substitute claims proposed in a motion to amend; a patent owner bears the burden to show that a motion to amend complies with certain statutory and regulatory requirements; and the Board may, in the interests of justice, make a determination regarding the patentability of substitute claims based on the record in the proceeding regardless of the burdens assigned to any party.

The NPRM basically follows the en banc decision in Aqua Prods., Inc. v. Matal, 872 F.3d 1290 (Fed. Cir. 2017), in which a majority of the judges concluded that the Office had not adopted a rule allocating the burden of persuasion with respect to the patentability of proposed substitute claims. In light of Aqua Products, as well as public comment provided in response to a Request for Comments, the Office proposes to issue specific rules applicable to motions to amend.
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PLI Program to Focus on New Patent Owner Opportunities

The USPTO’s Patent Trial and Appeal Board (PTAB) is in the midst of a historic makeover. New leadership has recently introduced significant changes. These changes are designed to rebalance AIA trial practices to allow patent owners a fighting chance. From new claim construction standards, amendment options,

PTAB Amendment Pilot Effective Today

Today, the Patent Trial & Appeal Board (PTAB) published the final Pilot Program for Motions to Amend in the Federal Register (here). The Pilot will run for one year, and is applicable to all AIA trial proceedings instituted going forward. (i.e., proceedings instituted before 3/15 are ineligible). The published Pilot carries forward the main idea of the initial RFC — feedback to the Patent Owner on its Motion to Amend prior to final decision — but, offers notable revisions in procedural timing and options as compared to the RFC.

As revised, those Patent Owners inclined to amend before the PTAB, may find the Pilot to offer strategic advantages beyond mere feedback.
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PTAB Updates Amendment Precedent

Today, the Patent Trial & Appeal Board (PTAB) designated Lectrosonics, Inc. v. Zaxcom, Inc, (IPR2018-01129, 01130, Paper 15 (Feb. 25, 2019) precedential as to the agency’s interpretation of 35 U.S.C § 316(d), amendment requirements and burden.

The Order provides guidance and information regarding statutory and regulatory requirements for a motion

New Proposal May Only Amplify Current Amendment Criticisms

A few weeks back, the USPTO published a Request for Comments (RFC) (here) on a proposed procedure for motions to amend in AIA Trial Proceedings. The proposal provides for a pilot program in which the parties are provided with an initial Board assessment of the proposed amendment. The assessment is provided early in the process. The idea being to provide for a meaningful opportunity for Patent Owner’s to revise proposed amendments where appropriate.

While the agency’s effort to improve the amendment process is to be applauded, its proposal will only increase Patent Owner costs and frustrations.
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Pilot Program Would Provide for Separate Briefing and Board Feedback

The USPTO has published a Request for Comments (RFC) (here) on a proposed procedure for motions to amend in AIA Trial Proceedings. The proposal provides for a pilot program in which the parties are provided with an initial Board assessment of the proposed amendment. The assessment is provided early in the process; providing meaningful opportunity to revise and oppose proposed amendments; and ensuring the amendment process concludes within the 12-month statutory timeline.

Specifically, the USPTO seeks public input on a proposed amendment process that would involve a preliminary non-binding decision by PTAB regarding the merits of a motion to amend.
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Rebutting the Presumption of Unreasonability

Given the complications associated with amending litigated claims, amendment is still relatively rare at the Patent Trial & Appeal Board (PTAB).  Yet, there remain Patent Owners willing to amend claims in limited scenarios. For these Patent Owners, the Board has provided some helpful guidance post Aqua Products.  As a reminder, newly designated precedent Western Digital Corp. v. SPEX Techs., Inc has replaced now de-designated precedent/informative decisions of MasterImage 3D, Inc. v. RealD Inc.,Case IPR2015-00040 (PTAB July 15, 2015) (Paper 42) and Idle Free Sys., Inc. v. Bergstrom, Inc., Case IPR2012-00027 (June 11, 2013) (Paper 26).

However, Aqua Products did not overrule all aspects of these earlier decisions despite their de-designations. So, the question remains as to the continued viability of some of these earlier positions — such as the standard for assessing a “reasonable number” of substitute claims.

In a decision issued today, the Board emphasized that adding claims beyond a 1-1 substitution creates a presumption of unreasonability.  And, that rebutting that presumption may not necessarily require a showing of patentable distinctness between multiple substitutes, as previously explained in Idle Free.
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Agency Still Responding to Criticism on Amendment Difficulty

A constant criticism of the Patent Trial & Appeal Board (PTAB) has been the perceived difficulty in amending claims in an AIA trial proceeding. In response, the PTAB has pointed out that the vast majority of motions to amendment fail to distinguish over the art of record.  That is, the Board is not applying Draconian procedural requirements. Rather, in my experience, Patent Owners are attempting to skirt an intervening rights defense with a cosmetic change, or seeking to maintain their infringement case with an incremental change in claim scope.  Such amendments routinely fail to clear the art of record (or supplemental art that is easily located). Not appreciating the real-life practicalities of amendment practice, many critics hoped that the shift in burden post Aqua Products would now favor amendments. While there has been a slight uptick for 2018, as expected, Aqua Products is not moving the needle.

Recent stats from the PTAB demonstrate that while amendment is being attempted slightly more often post-Aqua, the outcomes are no more favorable to Patent Owners.
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Aqua Products Results in De-designation of Previous Amendment Precedent

In view of the decision from the United States Court of Appeals for the Federal Circuit in Aqua Products, Inc. v. Matal, 872 F.3d 1290 (Fed. Cir. 2017), regarding motion to amend practice and procedure in AIA trials, the Patent Trial & Appeal Board (PTAB) has

2017: A Year of CAFC Feedback & Agency Refocus

With so much attention being paid to Oil States, it was easy to lose sight of many of the more noteworthy Patent Trial & Appeal Board (PTAB) related decisions of 2017. Last year brought significant feedback from both the Federal Circuit and Board on a number important aspects of administrative trial practice. From important issues of appellate standing, the use of ancillary petition art, to a crack down on follow-on petitions and recycled prior art, both the Board and Federal Circuit delivered a host of critical clarifications.

While a bit later than usual…below are my Top 5 PTAB Trial-related Developments of 2017.  
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