Amster Rothstein and Ebenstein, LLP - Intellectual Property Law

Patent Law Alert:

November 30, 2017
Author(s): Charles R. Macedo, Christopher Lisiewski

On November 22, 2017, the Patent Trial and Appeal Board (“PTAB”) issued a guidance on motions to amend filed in inter partes review (“IPR”) and post-grant review (“PGR”) proceedings following the Federal Circuit’s en banc decision in Aqua Products, Inc. v. Matal, 872 F.3d 1290 (Fed. Cir. 2017) ( (“the Guidance”).

In the Guidance, the PTAB confirmed that in light of the Federal Circuit’s Aqua Products decision, the burden of persuasion will no longer be placed on a patent owner with respect to the patentability of substitute claims presented in a motion to amend.  In reviewing patent owner’s motion to amend, as long as the motion satisfies the statutory requirements under 35 U.S.C.
§ 316(d) (i.e., proposing a reasonable number of substitute claims, not enlarging the scope of the claims, and introducing no new matter), the PTAB will “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.”  According to an example provided in the Guidance, “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.”

Beyond this shift in where the burden of persuasion lies, the PTAB advised in the Guidance that the PTAB’s practice and procedure relating to motions to amend will not change: 
In view of the shift of burden of persuasion from patent owner to petitioner, the PTAB will entertain requests from petitioners to authorize petitioner’s sur-reply brief with respect to any motion to amend.

In accordance with the Guidance, a motion to amend filed in an IPR or PGR proceeding: 
May cancel any challenged claim (35 U.S.C. § 316(d)(1)); 
We will continue to monitor the PTAB for the latest developments in the PTAB rules and practice on amendments in IPR proceedings.

*Charles R. Macedo is a Partner, Jung S. Hahm is Senior Counsel and Christopher Lisiewski is a Legal Intern at Amster, Rothstein and Ebenstein LLP.  Their practice specializes in intellectual property issues including practice before the Patent Trial and Appeal Board.  They may be reached at [email protected], [email protected] and [email protected].

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