Amendments in IPRs? Welcome back to the future

By Van Lindberg
October 25, 2017

The industry reaction to Aqua Products v. Matal has been swift. In IPWatchdog’s Industry Roundup blog post, there was broad acclaim: “Aqua Products is a sound decision that helps to add needed balance to post-grant proceedings” said Russell Slifer. “It is good to see the Federal Circuit taking a deeper dive into how the PTAB conducts its reviews,” said Paul Morinville. Others spoke to the probable effect on those challenging patents – hoping that it will provide a incentive against filing IPRs. “There is a much higher chance that the defendant, not only losing the fight on invalidating the patent, may come out of the IPR with patent claims that are even harder to argue non-infringement,” says Ed Kwok. “This decision will likely make IPRs less attractive to defendants in district court, who may now prefer to litigate in court rather than give the patent holder the opportunity to make an amendment,” said Ira Schaefer and Anthony Biondo. Aqua Products appears to many to be a welcome break for patent owners and a substantial easing of the restrictions on claim amendments in IPR proceedings.

For those involved with post-grant proceedings before the AIA, however, Aqua Products at most means a return to the amending regime allowed under the previous inter partes post-grant procedure, inter partes reexaminations. Given that IPRs were explicitly designed to extend and amend the previous inter partes reexamination procedures, a comparison of amendment practice under the two procedures makes a number of lessons clear.

IPR me like its 1999

Not surprisingly, there are a lot of similarities between the procedures. Pre-AIA 35 U.S.C.§§311-318 permitted the patent owner to propose amendments and additional claims; Post-AIA §316 provides that the patent owner may file a motion to amend the patent by canceling any challenged patent claim and proposing a reasonable number of substitute claims. The burden of proof is also similar to the rule affirmed in Aqua Products: In the context of inter partes reexam proceedings, the third party requester (or the PTO) needed to establish that newly proposed claims and amendments were not patentable. We’ll assume for a moment that Aqua Products opens the floodgates and allows amendment practice in IPRs similar to what was allowed under the 1999 inter partes reexamination statute. So what does that mean?

Looking back at inter partes reexam proceedings, getting valuable amendments through the process was challenging. Similar to original prosecution, any amendments or additional claims put forth in the context of the inter partes reexam proceeding were usually presumed to be necessary responses to overcome prior art challenges that had been put forth by the third party requester, meaning that all elements of the unamended claim were implicitly admitted to be in the prior art. With the third party requester there to comment on each proposal by the patent owner, it was sometimes easy to find an additional piece of art to “plug the hole” and reestablish invalidity, just this time with an additional reference under §103. Amendments also opened the door for the third party requester to bring in new art, as it would be inequitable to allow new arguments from the patent owner without the opportunity for the third party requester to respond.

In IPRs under Aqua Products, the same dynamic will likely apply. While the PTAB will be unlikely to search out its own prior art to evaluate new or newly amended patents, the petitioner will be there to comment and respond to each submission by the patent owner. As with inter partes reexaminations, amendments will also broaden the scope of the evidence that the petitioner may be able to apply. Given a sufficiently motivated petitioner, amending a patent claim may make establishing validity even harder.

Amendments and Litigation

Amendments also create significant difficulties for co-pending litigation. Patent owners are frequently reluctant to go on the record relative to claim interpretation, preferring to let the claims “speak for themselves” as much as possible. In the context of proving patent infringement, the less said, the better.

Defending amendments, however, can sometimes lead statements that prevent patent owners from establishing infringement. One popular tactic under the inter partes reexamination scheme was the “squeeze play.” If done correctly, the patent owner could preserve patentability by amending the claims – but in a way that precluded infringement in the co-pending litigation. To the extent that amendments become more popular after Aqua Products, we should expect sophisticated patent practitioners to bring the squeeze play out again.

An additional wrinkle sometimes arose under inter partes reexaminations was uncertainty regarding the status of claims that had been amended. Putting aside the issue of intervening rights defenses – which is significant – an amendment can sometimes force the dismissal of litigation. Take for example Ho Keung Tse v. eBay, Inc. et al (N.D.Cal. 3:11-cv-01812). In Tse, the court considered whether a claim that was canceled in an inter partes reexamination proceeding could be asserted in the parallel litigation proceeding. The Tse court wrote:

Only claim 21 of United States patent number 6,665,797 is asserted in this action. A reexamination of the ’797 patent was initiated in July 2007 by defendants in a different district court action, and in July 2009, the United States Patent and Trademark Office issued a final rejection of several claims, including claim 21….

Plaintiff … amended claim 21 in March 2010…. The Board of Patent Appeals and Interferences reversed the rejection as to amended claim 21, but affirmed the rejection of other claims. Plaintiff then appealed the BPAI decision… that appeal remains pending (see Dkt. No. 133).

No reexamination certificate has been issued for the ’797 patent. Thus, the original version of claim 21 has been cancelled, but the amended version has not yet issued. There is no claim 21 at this time, and there is no guarantee that a reexamination certificate eventually will issue with the an amended version of claim 21 in its current form. (Tse v. eBay, Order Dismissing Action, pp. 1-2)

The procedural mechanism in Tse is particularly relevant to amendments under IPRs. In an IPR, the method of amending a claim is canceling the challenged patent claim and proposing a reasonable number of substitute claims. Assuming that the PTAB requires motions to amend to include both the cancellation and the new proposed text, amending any claim that is also in litigation will put a patent owner in the same position as Ho Keung Tse: in posession of a possible claim that could issue at some time in the future, but without anything to assert in the present.

Looking forward, looking back

Now that the Federal Circuit has ruled in Aqua Products, the PTAB will surely be quick to develop any needed procedures relating to patent owner amendments. With all the commonalities between IPRs and inter partes reexaminations, the PTAB may choose to borrow from its own history to establish procedures closer to those used in the pre-AIA era.

Perhaps a number of patent owners would prefer the pre-AIA inter partes reexamination proceedings, with its 68% rate of patents exiting the process with the patent still existing – and in some cases even more enforceable. But consider: the PTO’s final inter partes reexamination statistics show that 61% of all reexamination certificates issued under the program included at least some change to the claims. Given the more limited number of amendment proposals allowed under IPRs, no one expects same percentage to apply.

But the most important lesson to learn from the past is that the ability to amend will probably not be as rosy for patent owners as many appear to be assuming.

The Author

Van Lindberg

Van Lindberg is a Senior Counsel in Dykema's San Antonio, Texas office who concentrates his practice on intellectual property matters. Van specializes in the intersection of technology and law, and was in 2012 named one of "America's Top 12 Techiest Attorneys" by the American Bar Association Journal. He is an inventor, software developer, and regular speaker on everything from open source community dynamics to graph theory, and has testified in Congressional proceedings as an expert on both copyright and encryption policy. Van’s clients include a “who’s who” of major technology and industrial companies.

For more information or to contact Van, please visit his Firm Profile Page.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 10 Comments comments.

  1. Anon October 25, 2017 1:02 pm

    I continue to press that the mere “right to ask” is not the same as an affirmative right to amend.

    Given that a real difference exists, the article falters at:

    We’ll assume for a moment that Aqua Products opens the floodgates and allows amendment practice in IPRs similar to what was allowed under the 1999 inter partes reexamination statute.

    I just do not see those floodgates – not until it is made clear that amendments themselves as of right, rather then merely the right to ask is the actual law.

  2. Ken October 25, 2017 4:33 pm

    “merely the right to ask is the actual law”

    Anon, it’s a bit more than that: It’s the right to ask AND to have that request given fair consideration (per other statutory, as well as constitutional, procedural rights).

  3. Anon October 25, 2017 9:02 pm

    Ken,

    It is still not a right TO amend.

  4. Anon October 25, 2017 9:04 pm

    As for the “fair considerations,” as I attempted previously to engage in a conversation on just what those are, perhaps you have checked out the In re Bergstrom case that I supplied that indicated the “fairness” involved.

  5. Paul F. Morgan October 26, 2017 9:35 am

    Re: “This decision will likely make IPRs less attractive to defendants in district court, who may now prefer to litigate in court rather than give the patent holder the opportunity to make an amendment..”
    ? Do you really think many D.C. judges are going to allow an amended complaint to substitute new claims in place of original claims long after the original complaint? New claims that will require new and different discovery, different infringement positions, different Markmans, completely different potential damages [due to intervening rights], etc.? IPRs do not ADD new and narrower claims, they allow requests to substitute claims.

  6. Anon October 26, 2017 1:03 pm

    Paul,

    Would D.C. judges have a right NOT to allow such amended claims? (or at least, to allow a “start-over” with those claims?)

    After all, coming out of the IPR, the patent in front of the D.C. no longer exists in its unamended form. I do not think that even “law of the case” allows such no-longer-existing-unemanded claims to be a part of any legal action.

  7. Night Writer October 27, 2017 6:23 am

    From what I’ve seen of patent litigation, I’d say that judges do not like patent cases and do all they can to get rid of them. An amendment would be just a good excuse to dismiss the case. Make them file a new complaint. But, I think in the alternative it could be argued that the amended claims are narrower and not outside the scope of the original complaint.

    You know the problem is invalidity arguments. Some courts have local rules that make you find all the prior art and make all the invalidity arguments upfront, so the court would then have to allow a whole new iteration for new invalidity arguments.

    I’d guess a dismissal.

  8. Anon October 27, 2017 7:48 am

    But, I think in the alternative it could be argued that the amended claims are narrower and not outside the scope of the original complaint.”

    Well stated, Night Writer.

    Looks like there was at least one person paying attention to the “amendments” discussions of late (and just how limited ANY such amendments that may make it through may be – see again In re Bergstrom for the height (and small diameter) of the hoops that need to be jumped through).

    And this just goes to emphasize even more that “amendment as of right” is simply NOT what is present in the AIA IPR regime.

  9. Paul F. Morgan October 27, 2017 1:06 pm

    Judges in general do not like belated amended complaints, especially if discovery and/or SJ motions have already occurred, and it is highly discretionary. Now that patent suit complaints must be much more specific per the recent FRCP rule change, the specific claims in suit may well have been identified in the complaint. Also, substituting narrow claims is a major change for a defendant’s prior art discovery efforts and changes any D.C. required claim chart submissions required by local rules.
    An attempt to change [rather than just drop] claims in-suit will have the same problems whether the claims in suit were changed by reissue, reexamination or IPR.

  10. Anon October 27, 2017 5:30 pm

    Mr. Morgan,

    What then would a court be able to do? The previous claims – and all of the attendant work ($) related to them are no more.

    A court deciding on its own to pause and wait for the results of an IPR must be aware that such results may in fact include such narrowed (different claims), AND the original claims (and attendant $) are no more.

    Are you suggesting that a court has some type of de facto elimination of the suit in progress when the court may be faced with a known outcome of what it itself has chosen as a path?

    Sounds almost as if the patent holder would be entirely screwed by such thinking. It’s not as if the patent holder had any real choice as to defend itself in an IPR, now is it?

    Surely, your defense of the IPR regime does not include such “rough justice” for patent holders, does it?