PTAB Amendment

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Preliminary Guidance More Hinderance Than Help

Patent Owner’s rarely seek to amend claims during PTAB trials. This is because, as most such patents are being simultaneously litigated, amendment introduces a host of complications — not the least of which is creating an intervening rights defense for the patent challenger. This is why amendments are historically seen in about 5-7% of PTAB trials.

For the rare Patent Owner that is inclined to amend, the PTAB offers an Amendment Pilot Program. The Pilot is designed to help Patent Owner refine their amendment positions with two opportunities to amend (non-pilot route permits one amendment submission). Under the Pilot, the Patent Owner can also request the panel’s preliminary assessment (i.e., Preliminary Guidance) of its initial amendment to assist in refining the final amendment submission.

But, practically speaking, Preliminary Guidance is a significant gamble for Patent Owners that is rarely worth taking. And as the Federal Circuit pointed out earlier this week, even when seemingly helpful, it may still prove ultimately unhelpful.Continue Reading PTAB Amendment Pilot – Guidance or Hinderance?

Federal Circuit Affirms Hunting Titan POP Decision

In Hunting Titan, Inc. v. DynaEnergetics GmbH & Co. KG, Inc., IPR2018-00600. The PTAB’s POP panel reviewed the denial of a Motion to Amend based upon a panel’s sua sponte modification of a petitioner’s proposed ground (here).  In reversing that determination, the POP found that such a sua sponte action should be a “rare circumstance.”  For example,  where there is a readily identifiable patentability concern apparent in the record.

At the time, I pointed out that when a petitioner presents a 103 ground that in reality is a 102 ground, I could not imagine how such a circumstance was not readily identifiable, and rare.  While seemingly agreeing with me, the Federal Circuit nonetheless affirmed the POP panel.
Continue Reading No PTAB Duty to Separately Examine Amended Claims

Roughly 10% of AIA Proceedings Involve Amendments

Earlier this week the Patent Trial & Appeal Board (PTAB) released the sixth installment of its Motion to Amend Study. The study tracks and analyzes all motions to amend filed in America Invents Act trials, including pilot motions, through the end of March 2020.  Not surprisingly, this installment doesn’t look much different than previous ones.  Amendment remains unpopular at the Board for strategic reasons, and those Patent Owners that do attempt amendment are rarely successful.

While the 6th installment preview early results on the Amendment Pilot, it does not present success rates (which to date, are no better then the old program – also, not a surprise). While there was an initial flurry of Patent Owners opting for the Pilot program, that initial amendment popularity has waned.
Continue Reading PTAB Amendment Study Shows More of the Same

CAFC Decision Moots Some POP Consideration in Hunting Titan Dispute

Last November, the PTAB ordered Precedential Opinion Panel (POP) review of the final written decision in  Hunting Titan, Inc. v. DynaEnergetics GmbH & Co. KG, Inc., IPR2018-00600. The rehearing request in Hunting Titan sought review of the Board’s denial of a Motion to Amend based upon an alleged sua sponte modification of a petitioner’s anticipation ground by the panel (here).  That is, the POP is reviewing the Board’s role in the amendment process where a petitioner either decides not to challenge an amended claim, or does so in a deficient manner that is apparent to the expert agency.

But the Federal Circuit has now weighed in on most aspects of this debate.
Continue Reading CAFC Finds “Little Sense” in Limiting the PTAB on Amended Claims

Motion to Amend Practice

For those interested in motion to amend practice in AIA trials, the Patent Trial & Appeal Board (PTAB) will be conducting a webinar on the topic this Wednesday, December 4th from noon to 1PM (EST) (here)

Deputy Chief Judge Jackie Bonilla and Lead Judge Jessica Kaiser will address a…

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.
Continue Reading Resolving AIA Amendment Burdens Unlikely to Move the Needle at the PTAB

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.
Continue Reading Gaming the PTAB Amendment Pilot?

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