Trial outcomes before the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (PTAB) can significantly impact patent validity, outcomes of concurrent litigation, products in commerce, and overall business strategies.
The ability to file a motion to amend (MTA) has been available since the inception of the America Invents Act (AIA) PTAB trials. Following a lack of use and success early on, the USPTO enacted a pilot program in 2019 in the hopes of making MTAs a more attractive and viable option for patent owners (POs).
Now two years later, the USPTO’s hopes appear to have been realized—initial data indicating increased success for POs in securing one or more substitute claims when participating in the pilot program.
For example, out of 22 MTAs in which POs elected the pilot program (from 31 eligible proceedings), 36% had at least one substitute claim granted. By contrast, only 11% had at least one proposed substitute claim granted where POs did not elect the pilot program.
While the efficacy of MTA practice will continue to be a hot topic for debate, MTA practice presents opportunities and challenges for both POs and petitioners, and both sides need to understand the pros and cons to position themselves for success. The following are the top five MTA considerations for both POs and petitioners.
Top Five MTA Considerations
The pilot program will add additional time burdens on both parties procedurally and during the oral hearing—all of which require a fair amount of strategizing and planning beforehand.
It provides POs with two options not previously available: (1) The PO may choose to receive preliminary guidance from the board on its MTA, and/or (2) the PO may choose to file a revised MTA after receiving petitioner’s opposition to the initial MTA and/or after receiving the board’s Preliminary Guidance (if requested).
These additional options add further actions—resulting in tight deadlines.
The pilot program will also affect how parties prepare for and conduct oral hearings. For example, in line with their burdens, the petitioner will need to effectively present two oral arguments within the allotted time frame—first, demonstrating that the original claims are unpatentable, and second, demonstrating that the substitute claims are unpatentable. The PO will face the same issue, as they may need to address the various positions taken vis-à-vis the original claims and substitute claims.
The additional opportunities for briefing, associated testimonial evidence, and potential depositions may significantly impact budget considerations for both the PO and petitioner alike. POs should weigh time and resources for proceeding with a MTA/rMTA versus prevailing on existing claims. Similarly, at the outset, petitioners should consider the resultant increased costs should the PO utilize the pilot program and set budget expectations accordingly.
Know your burdens. The PTO rules assign to the PO the burden of persuasion to show that a MTA/rMTA complies with certain statutory (35 U.S.C. 316(d), 326(d)) and regulatory (37 CFR 42.121, 42.221) requirements, including that it:
- Proposes a reasonable number of substitute claims;
- Responds to a ground of unpatentability involved in the trial;
- Does not enlarge the scope of the claims;
- Does not introduce new matter; and
- Sets forth written description support for each claim added or amended.
When opposing a MTA/rMTA, the petitioner bears the burden of persuasion to show, by a preponderance of the evidence, that the proposed substitute claims are unpatentable.
Leveraging Preliminary Guidance
The preliminary guidance can provide early insights from the board as to its view of the case and can be helpful to both parties. For example, it can help the PO address issues in its initial claim amendments and provide revised claim amendments to overcome those issues. These areas may include lack of adherence to statutory and regulatory requirements, the board’s interpretation of the cited art, or even potential § 101 scrutiny.
On the petitioner’s side, the petitioner can leverage the preliminary guidance to attack any revised claim amendments submitted by the PO. For example, if the preliminary guidance identifies weaknesses in the PO’s claim amendments, such as obviousness challenges, lack of written description support, or indefiniteness, this is a signal to petitioner as to areas that they should be paying attention to when the PO files a revised MTA.
Understand the impact of claim amendments on concurrent litigation. A challenged patent at the PTAB may be one that is either being asserted or can potentially be asserted against a petitioner in another forum.
To the extent possible, both PO and petitioner want to be mindful of how the substitute claims may affect strategy and potential damages in a parallel proceeding. This requires an upfront consideration of how amended claims may affect the parallel litigation and a clear understanding of the client’s immediate and long-term goals and objectives.
In summary, winning at the PTAB can have significant ramifications for the parties’ business operations and strategies. As such, when approaching MTA practice before the PTAB, both sides should take the above considerations into account to position themselves for success.
This column does not necessarily reflect the opinion of The Bureau of National Affairs, Inc. or its owners.
Lestin L. Kenton Jr. is a director in Sterne Kessler’s Electronics Practice group. His practice areas include many aspects of IP law, including post grant review proceedings at the USPTO, Section 337 investigations before the U.S. International Trade Commission and the preparation and prosecution of patent applications, among others.
Ali Allawi is an associate in Sterne Kessler’s Electronics Practice group. His practice covers all aspects of IP, including the preparation and prosecution of U.S. and foreign patent applications, client counseling, patent portfolio development and management, post grant proceedings, and appeals. He also routinely participates in AIA proceedings before PTAB.