On November 21, 2017, the USPTO’s Chief Administrative Patent Judge David P. Ruschke issued a memorandum to the Patent Trial and Appeal Board (PTAB) providing guidance on motions to amend claims during trial proceedings before the PTAB. This was done in light of the Federal Circuit’s en banc decision in Aqua Products, Inc. v. Matal, 872 F.3d 1290 (Fed. Cir. 2017) on October 4, 2017.
To review, Aqua Products held that 35 U.S.C. § 316(e) as enacted as part of the Leahy-Smith America Invents Act “unambiguously requires the petitioner to prove all propositions of unpatentability, including for amended claims.”
In light of this, Judge Ruschke has reversed the PTAB’s practice of placing the burden of persuasion on the patent owner rather than the inter partes review (IPR) petitioner:
In light of the Aqua Products decision, the Board will not place the burden of persuasion on a patent owner with respect to the patentability of substitute claims presented in a motion to amend. Rather, if a patent owner files a motion to amend (or has one pending) and that motion meets the requirements of 35 U.S.C. § 316(d) (i.e., proposes a reasonable number of substitute claims, and the substitute claims do not enlarge scope of the original claims of the patent or introduce new matter), the Board will proceed to determine whether the substitute claims are unpatentable by a preponderance of the evidence based on the entirety of the record, including any opposition made by the petitioner. Thus, for example, if the entirety of the evidence of record before the Board is in equipoise as to the unpatentability of one or more substitute claims, the Board will grant the motion to amend with respect to such claims, and the Office will issue a certificate incorporating those claims into the patent at issue.
The memo then continues by indicating that beyond that change, practice and procedure before the PTAB will not be altered. The patent owner must still meet the requirements for a motion to amend, such as indicating written support for the amendments being proposed.
Judge Ruschke’s memo then goes on to explain that the PTAB will also continue its current briefing practice as to the types, timing, and page limits of briefs, and that the PTAB’s standard Scheduling Order will remain the same. The memo also states that a patent owner is still to confer with the PTAB before filing a motion to amend.
The memo then sets forth that any party involved in a pending motion to amend is invited to schedule a conference call with the PTAB for their particular case in light of Aqua Products, if the party believes there is a need to do so. The memo also indicates that the PTAB has already, or will, contact parties with motions to amend that were pending at the time Aqua Products was issued to let them know that a request for a conference call is appropriate. In doing so, the memo makes clear that during any such conference call, any party may request briefing changes or additional briefing and that “[t]he Board generally will permit supplemental briefing regarding the patentability of substitute claims proposed in a motion to amend, if requested.”
The memo goes on to explain that if a patent owner still has an opportunity to file a motion to amend in an already-instituted proceeding, any party may contact the PTAB regarding briefing questions before Due Date 1 (which is for things such as filing a response to the petition for IPR and filing the motion to amend itself). The memo then concludes by stating that if a patent owner wants to file a new or substitute motion to amend in a proceeding that is already past Due Date 1, the owner must contact the PTAB to arrange a conference call on that matter.
It’s nice to see that patent owners finally have a little bit of breathing room in IPR proceedings in light of Aqua Products and Judge Ruschke’s memo. Just a little.