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USPTO Proposes New Rules for Amending Claims During AIA Reviews

Earlier this week, the United States Patent and Trademark Office (“USPTO”) proposed rule changes for amending patents in AIA proceedings.  The proposed rule changes would apply to inter partes review (“IPR”), post-grant review (“PGR”), and covered business method patent review (“CBM”) (collectively, “post-grant trial”) proceedings before the Patent Trial and Appeal Board (“PTAB”) to make explicit that a patent challenger bears the burden of persuasion regarding motions to amend filed during these proceedings.

Specifically, the USPTO has proposed adding the below paragraph (d) to each of 37 C.F.R. §§ 42.121 and 42.221:

(d) Burden of Persuasion. On a motion to amend:

          (1) A patent owner bears the burden of persuasion to show, by a preponderance of the evidence, that the motion to amend complies with the requirements of paragraphs (1) and (3) of 35 U.S.C. [316/326](d), as well as paragraphs (a)(2), (3), (b)(1), and (2) of this section;

          (2) A petitioner bears the burden of persuasion to show, by a preponderance of the evidence, that any proposed substitute claims are unpatentable; and

          (3) Irrespective of paragraphs (d)(1) and (2) of this section, the Board may, in the interests of justice, exercise its discretion to grant or deny a motion to amend for any reason supported by the evidence of record.

These proposed new rules make it clear that the burden is on the patent challenger to show that the patent owner’s proposed substitute claims are unpatentable.  The proposed rules would thus conform PTAB practice to the Federal Circuit’s 2017 en banc decision in Aqua Products, discussed here, which rejected the at-the-time PTAB practice of requiring patent owners to affirmatively prove proposed amended claims as patentable.  The proposed rules are also a follow up to the PTAB’s recent action designating Lectrosonics, Inc. v. Zaxcom, Inc., IPR2018-01129, 01130 (P.T.A.B. Feb. 25, 2019) (Paper 15), which provided a framework for other PTAB Boards to apply Aqua Products, as a precedential decision.  As such, these proposed changes bring the PTAB rules up to speed with its current practice as mandated by the Federal Circuit.

The proposed rules provide further clarifications for amendments in post-grant trials.  For example, the new rules also make clear that the initial burden of showing that a motion to amend complies with the statutory and regulatory requirements (e.g., that the proposed amended substitute claims are reasonable in number, do not enlarge the scope of the challenged claims or introduce new matter, and respond to a ground of unpatentability involved in the trial) is on the patent owner.

Finally, the proposed rules explicitly allow the PTAB to exercise its discretion to grant or deny a motion to amend “for any reason supported by the evidence.”  Thus, under these new rules, the PTAB is given broad latitude to decide motions to amend based on any evidence in the record, even if such evidence was not specifically relied on by the parties.

The proposed rule changes are open to comments from the public until December 23, 2019.  We will continue to monitor the progress of these proposed changes and will provide an update when available.

©1994-2020 Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C. All Rights Reserved.National Law Review, Volume IX, Number 298


About this Author

Daniel B. Weinger Patent Litigation Attorney Mintz Law Firm

Daniel's practice in intellectual property focuses on patent litigation, both at the International Trade Commission and the Federal District Courts. Daniel has participated in all phases of patent litigation, including active engagement in multiple evidentiary hearings at the International Trade Commission. He has done work in a variety of technology areas, including computer software, software architecture, GPS, network devices, semiconductors, converged devices, and LED lighting.

Prior to joining Mintz Levin, Daniel worked as a database...

Vincent M. Ferraro, Mintz Levin, Patent Litigation Licensing & Technology Transactions Strategic IP Monetization & Licensing IPRs & Other Post-Grant Proceedings Federal District Court

Vincent’s practice focuses on patent disputes in Federal District Courts and before the U.S. Patent Trial and Appeal Board. With over 10 years of experience, Vincent has handled patent disputes involving telecommunications, cellphone and smartphone technology, digital photography, image processing, electronic circuitry, electrical components, computer software and hardware, LCD technology, data mining, financing, mechanical devices, medical devices and implants, consumer products, GPS technology, e-commerce, and Internet security. In patent litigation cases, he guides clients through all phases of the case, including pre-suit due diligence, claim construction, discovery, depositions, hearings, and trial.

Vincent also has significant experience representing clients in post-grant proceedings before the Patent Trial and Appeal Board of the U.S. Patent and Trademark Office, including inter partes review (IPR) and covered business method (CBM) patent review proceedings. He has represented both petitioners and patent owners in these proceedings.

Vincent also regularly counsels clients on their IP portfolio strategies and assists them in developing design strategies for their products. He works closely with inventors, analyzes new inventions, drafts U.S. patent applications, and prosecutes patents before the U.S. Patent and Trademark Office in various high-technology fields and on consumer products. He also renders patent freedom-to-operate and validity opinions.