Patents - October 06, 2016

Inter partes review 7: Motions to amend study and cases

The United States Patent and Trademark Office (USPTO) has studied how the Patent and Trial and Appeal Board (PTAB) has decided motions to amend the claims in inter partes review proceedings. The report of the study is dated April 30, 2016 and is available here. The study shows that the PTAB rarely grants such motions at trial. This was a point made by Cuozzo Speed Technologies, LLC in the eponymous case decided by the Supreme Court on June 20, 2016. (Cuozzo submitted a brief that claimed the TTAB granted only five out of 86 motions to amend that it had decided as of June 30, 2015.)

The study concluded that the TTAB had conducted 192 trials of inter partes review proceeding in which the patent owner filed motions to amend the claims. Due to settlement, original claims being held patentable, and the motions being solely to cancel claims (easily granted), the TTAB actually decided motions to amend in 118 trials. Two of those motions were granted and four granted in part. The TTAB therefore denied ninety-five percent of the motions to amend.

The Federal Circuit recently decided for the first time that the PTAB was wrong to deny a motion to amend the claims. In Veritas Techs. LLC v. Veeam Software Corp., ___ F.3d ___, 2016 U.S. App. LEXIS 15978 (Fed. Cir. August 30, 2016) the court vacated the PTAB’s denial of the patent owner’s motion to conditionally amend the claims because the Board’s decision was “arbitrary, capricious, or otherwise not in accordance with the law” under the Administrative Procedures Act (specifically, 5 U.S.C. § 706(2)(A)).

The standards for motions to amend the claims in inter partes review actions, and how the PTAB should act if the patent challenger does not contest such a motion or does so inadequately, are the subject of a rehearing en banc by the Federal Circuit. In re Aqua Products, Inc., 2016 U.S. App. LEXIS 14862, 119 U.S.P.Q. 2d (BNA) 1882 (Fed. Cir. August 12, 2016)(vacating the panel opinion reported at 823 F.3d 1369 (Fed. Cir. May 25, 2016) and granting motion for rehearing en banc). The questions for briefing are:

When the patent owner moves to amend its claims under 35 U.S.C. § 316(d), may the PTO require the patent owner to bear the burden of persuasion, or a burden of production, regarding patentability of the amended claims as a condition of allowing them? Which burdens are permitted under 35 U.S.C. § 316(e)?
When the petitioner does not challenge the patentability of a proposed amended claim, or the Board thinks the challenge is inadequate, may the Board sua sponte raise patentability challenges to such a claim? If so, where would the burden of persuasion, or a burden of production, lie?