Inter partes review (“IPR”) has become the forum of choice for challenging the validity of patent claims. Introduced in 2012 as part of the America Invents Act, this proceeding is conducted by a panel of judges from the Patent Trial and Appeal Board (PTAB), which in turn is an administrative law body of the U.S. Patent and Trademark Office (PTO).
A petitioner presents prior art patents or publications that anticipate or make obvious a patent claim as issued. If the patent owner is unable to adequately distinguish the invention as defined by the language of the patent claim, that owner may move to amend the claim. If the amended claim language satisfies the judges, the patent can survive with newly issued but narrowed coverage defined by the amended claim.
As of April 30, 2016, the PTAB had completely denied 112 of 118 motions to amend in IPRs. Patent owners seeking to amend have clearly faced significant burdens and limitations imposed by the PTAB. Despite this history, we can expect to see an increase in motions to amend claims during inter partes review proceedings as a result of a recent en banc Federal Circuit decision. (The same is true for the less frequently filed post-grant reviews and covered business method reviews).
In Aqua Products v. Matal, the court struck down the PTAB practice of imposing on the patent owner the burden of proving the patentability of amended claims. Instead, the court has placed on the petitioner the burden of proving unpatentability by a preponderance of the evidence.
While a heavy weight has been lifted from its shoulders, the patent owner must still, as the one seeking to amend, meet certain responsibilities, the precise scope of which is not entirely clear. At a minimum, the court requires in compliance with 35 USC §316(d)(3), the patent owner to show that the claim amendment does not enlarge the scope of any claims or add new matter. While they did not explicit say so, a majority of judges on the court seem open to the PTAB’s requiring a patent owner who seeks to amend a claim to demonstrate a patentable distinction over the unpatentability grounds set forth in the petition.
Bringing a motion to amend will be much easier than in the past because the patent owner is now free in its motion from having to show patentable distinctions over a wide variety of prior art, including any material art in the patent’s prosecution history, or of record in other proceedings before the PTO involving the patent, or that the patent owner makes of record in the current proceeding pursuant to its duty of candor and good faith.
The amendment process will be further eased if the patent owner is able to rely on arguments set forth in its Patent Owner Response (“POR”). Judge O’Malley and the four judges who signed on to her opinion believe it is fairly uncontroversial that a motion to amend must be decided on consideration of the entirety of the IPR record. Assuming this becomes PTAB practice, the patent owner may not need to cram all its supporting evidence into the 25 pages allotted for a motion to amend.
Relieved from distinguishing over countless pieces of prior art and authorized to rely on the arguments and evidence presented in the POR, patent owners will be much better able to adequately argue for amended claims within the 25 pages. This may enable them to propose additional amended claims which they previously could not present because of lack of space in the pages permitted for their motion.
Petitioners are well advised to consider the potential for amendments to the claims of a patent before filing an IPR petition. Given that the time to respond to a motion to amend will likely be less than three months, it will be useful to get a jump on searching out prior art and excerpts from the art for use against such an amendment should it be presented.
If a patent owner succeeds in amending its claim, it may later urge in court or in the PTO that the petitioner should be estopped from raising challenges it reasonably could have raised during the IPR. The estoppel provisions state “[t]he petitioner in an inter partes review of a claim in a patent…may not assert…that the claim is invalid on any ground that the petitioner raised or reasonably could have raised during the inter partes review.” 35 USC §315(e). More...
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