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. Continue Reading How to Fix the PTAB’s Amendment Problem

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. Continue Reading PTAB Proposes Changes to Amendment Practice

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. Continue Reading PTAB Debates Standard for Reasonable Number of Substitute Claims

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. Continue Reading Amendments at the PTAB Hamstrung by Litigation Realities

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 de-designated as precedential MasterImage 3D, Inc. v. RealD Inc., Case IPR2015-00040 (PTAB July 15, 2015) (Paper 42) and has de-designated as informative Idle Free Sys., Inc. v. Bergstrom, Inc., Case IPR2012-00027 (June 11, 2013) (Paper 26). Both decisions have been removed from PTAB’s Precedential and Informative Decisions web page.

Concurrently, the PTAB has designated as informative the following order in Western Digital Corp. v. SPEX Techs., Inc., which provides guidance on motion to amend practice in AIA trials such as: (1) contingent motions to amend; (2) the burden of persuasion that the Office applies when considering the patentability of substitute claims; (3) the requirement that a patent owner propose a reasonable number of substitute claims; (4) the requirement that the amendment respond to a ground of unpatentability involved in the trial; (5) the scope of the proposed substitute claims; (6) the requirement that a patent owner provide a claim listing with its motion to amend; (7) the default page limits that apply to motion to amend briefing; and (8) the duty of candor.

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.   Continue Reading Top 5 PTAB Related Decisions of 2017

No Duty to Discuss Closest Prior Art…But you Probably Should Anyway

In implementing the Federal Circuit’s In Re Aqua Products’ holding, the Patent Trial & Appeal Board (PTAB) explains that “practice and procedure before the Board will not change.” And that, “[t]he Board will continue its current briefing practice as to the types, timing, and page limits of briefs.”

As pointed out previously, removing the burden from the Patent Owner Motion to Amend will aid the PTAB in granting far more motions, but ultimately, amendments are not expected to be any more attractive, or common. Continue Reading PTAB: Practice & Procedure Unchanged after Aqua Products