USPTO - PTAB’s Motion to Amend Pilot Program

Today, the USPTO Blog (Andrei Iancu, Under Secretary of Commerce for Intellectual Property and Director of the USPTO, and Scott Boalick, Chief Judge of the Patent Trial and Appeal Board of the USPTO) stated the PTAB's Motion to Amend Pilot Program shows promising results:

"On March 15, 2019, the USPTO implemented a pilot program for motions to amend (MTAs) in AIA trials before the PTAB. In MTAs, patent owners may request to cancel challenged claims or propose substitute claims to replace challenged claims if they are found unpatentable. We have seen promising results for claim amendments made under this pilot program and want to share these with you.

Under the pilot program, a patent owner has two new options. First, the patent owner can request preliminary guidance from the Board on its MTA. Second, the patent owner may file a revised MTA in response to preliminary guidance (if requested) or to the petitioner’s opposition. In short, by providing for guidance and an opportunity to revise the MTA, the pilot program provides for back and forth between the Board and the patent owner that did not previously exist.

If a patent owner requests preliminary guidance, the Board will provide feedback on the statutory and regulatory requirements for an MTA, as well as on patentability of the proposed substitute claims based on the record at that time. The patent owner may then file a revised MTA in response to the preliminary guidance. Alternatively, if the patent owner does not request preliminary guidance, it may file a revised MTA in response to the petitioner’s opposition to the original MTA. Notably, if a patent owner does not choose either pilot option, then the MTA proceeds under effectively the same practice as before implementation of the pilot program.

The pilot program applies to all AIA trials instituted on or after March 15, 2019, and patent owners could start filing MTAs under the program in June of 2019. Between June 1, 2019 and September 30, 2020, patent owners requested preliminary guidance in 76% of MTAs, or 78 out of 102 MTAs. Thereafter, 79% of patent owners filed a revised MTA.  From April 1, 2020 through September 30, 2020, the PTAB issued 31 Final Written Decisions addressing pilot-eligible MTAs. So far, the pilot program options are being used in the vast majority of MTAs. Moreover, early results suggest that patent owners who chose at least one of the pilot program options are more likely to have their MTAs granted for at least one proposed substitute claim as compared to MTAs that do not use the pilot program options. 

Specifically, out of the 31 Final Written Decisions with MTAs that were eligible for the pilot program, 22 elected at least one of the pilot program options. And out of the 22 MTAs in which patent owners elected at least one pilot program option, 36% had at least one proposed substitute claim granted. By contrast, of the nine MTAs where patent owners did not elect either pilot program option only 11% had at least one proposed substitute claim granted. Before the pilot program, only about 14% of MTAs had at least one proposed substitute claim granted. 

The USPTO implemented the MTA pilot program with the goal of providing a more robust amendment practice in AIA trials, in a manner that is fair and balanced for all parties and stakeholders. Through this practice, the aim is to ensure that patent owners have viable opportunities to amend claims challenged by third parties. Preliminary data indicates that the pilot program is working as intended."

Copyright © 2020 Robert Moll. All rights reserved.

USPTO - PTAB Motion to Amend Study Updated

The USPTO released an update to the PTAB Motion to Amend Study today.

It seems the data on motions to amend filed under the pilot program is insufficient at this stage to support it is less than a challenge to amend patent claims in PTAB trials.

Here's the USPTO summary:

"The Patent Trial and Appeal Board (PTAB) has published 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.

This installment completes the data on all motions to amend filed before the effective date of the New Pilot Program Concerning Motion to Amend Practice and Procedures in Trial Proceedings Under the America Invents Act Before the Patent Trial and Appeal Board (84 FR 9497).

Highlights from the installment include:

• Some limited data on motions to amend filed under the motion to amend pilot program that the office implemented for cases instituted on or after March 15, 2019.

• Of the 5,359 trials that have gone to completion or settled, patent owners sought to amend the claims in 562 trials—504 pre-pilot program trials and 58 pilot program trials.

• Of the 504 trials with pre-pilot motions to amend, the PTAB decided the merits of 335 motions. In the remaining 170 completed trials, the motions to amend were rendered moot because the PTAB did not find the original claims unpatentable, were not decided because the trial terminated prior to a final written decision, or contained an amendment that only sought to cancel claims.

• Of the 335 pre-pilot motions to amend that the PTAB decided, the PTAB granted or granted-in-part 46 motions. For 92% of the 289 motions denied or denied-in-part, the PTAB determined that the proposed amended claims did not satisfy at least one statutory requirement of patentability—akin to an examiner rejecting a proposed amended claim because it is anticipated, obvious, not adequately described in the written description, indefinite, or directed to non-statutory subject matter—or found that the patent owner failed to satisfy the statutory requirements for a motion to amend under 35 U.S.C. §§ 316(d) or 326(d).

• For the limited number of motions to amend filed under the pilot program and included in the study, patent owners requested preliminary guidance in 83% of motions and filed a revised motion to amend in 58% of trials after receiving preliminary guidance (when taking into account cases that terminated, cases in which the motion to amend was withdrawn, or cases in which the deadline to file a revised motion to amend had not yet passed)."

Copyright © 2020 Robert Moll. All rights reserved.

PTAB - Proposed Rules on Burden of Persuasion on Motions to Amend Claims

Today, the USPTO published a Notice of Proposed Rulemaking (NPRM) concerning burdens of persuasion on motions to amend claims in trials (e.g., inter partes review) before the Patent Trial and Appeal Board (PTAB).

It proposes a petitioner challenging a patent bear the burden to show unpatentability of substitute claims proposed in the motion and the patent owner bear the burden to show that a motion complies with rules and the statutory requirements. Further PTAB can determine the patentability of the substitute claims based on the record. Note this proposed rule is favorable to patent owners.

The USPTO invites public comments on the rule by December 23, 2019.

Copyright © 2019 Robert Moll. All rights reserved.

USPTO - PTAB Study on Motions to Amend in AIA Trials

In recent years it has been very challenging for a patent owner to amend claims during an America Invents Act (AIA) trial. The USPTO published a study that suggests this is still the case. Here's the results from a PTAB Motion Study that tracks and analyzes motions to amend filed in AIA trials up to the end of March 2018:

• "Of the 3,203 trials that have gone to completion or settled, patent owners sought to amend the claims in 305 trials.
• Of the 305 trials with motions to amend, the PTAB ultimately decided the merits of the motions in 189 trials. In the remaining 116 completed trials, the motions to amend were rendered moot because the PTAB did not find the original claims unpatentable, were not decided because the trial terminated prior to a final written decision, or were an amendment that only sought to cancel claims.
• Of the 189 motions to amend that the PTAB decided, the PTAB granted or granted-in-part 18 motions. For 160 of the 182 motions denied or denied-in-part, the PTAB determined that proposed amended claims did not satisfy at least one statutory requirement of patentability akin to an examiner rejecting a proposed amended claim because it is anticipated, obvious, not adequately described in the written description, indefinite, or directed to non-statutory subject matter or found that the patent owner failed to satisfy the statutory requirements for a motion to amend under 35 U.S.C. 316(d). For the remaining 22 motions, the PTAB denied on procedural grounds related to the regulatory requirements for a motion to amend.
• As of the midpoint of FY 2018, patent owners had filed more motions to amend than in recent fiscal years."

For more details see the Motion to Amend Study Update under the PTAB Statistics.

Copyright © 2018 Robert Moll. All rights reserved.

PTAB - MasterImage 3D, Inc. v. RealD Inc. - Patent Owner Must Prove Patentability in Motion to Amend Claims

In MasterImage 3D, Inc. v. RealD Inc., IPR2015-00040, Paper 42 (PTAB July 15, 2015), the Patent Trial and Appeal Board (PTAB) discusses requirements for a patent owner seeking to establish the patentability of substitute claims in a motion to amend.

This is intended to clarify the patent owner's burden to set forth a prima facie case of patentability of narrower substitute claims in a motion to amend as described in Idle Free Systems, Inc. v Bergstrom, Inc., IPR2012-00027, Paper 26 (PTAB June 11, 2013)(informative).

Copyright © 2015 Robert Moll. All rights reserved.

PTAB - Corning Optical Communications RF, LLC v. PPC Broadband, Inc. - Motion to Amend Claims

In Corning Optical Communications RF, LLC v. PPC Broadband, Inc., IPR2014-00441, the Patent Trial and Appeal Board (PTAB) added an order on a motion to amend claims (paper 19) to PTAB's list of representative orders, decisions, and notices. In the order, PTAB gives guidance on how to meet the requirements of a motion to amend claims and authorizes a patent owner can list the substitute claims in an appendix so they do not count toward the 15-page limit for the motion.

Copyright © 2014 Robert Moll. All rights reserved.