Responsive to public interest in whether it is too difficult for Patent Owners to amend claims during PTAB Trials, the Patent Office recently published a study providing aggregate data about motions to amend filed with the PTAB since its inception in 2013. The study, which was published by PTAB Chief Judge Nathan Kelly in the May 9, 2016 edition of the USPTO’s “Director’s Forum Blog,” confirms what the public, and certainly the patent bar, has suspected since the AIA created the PTAB to handle IPR, CBM, and PGR Trials: (1) that Patent Owners very rarely filed motions to amend, and (2) motions to amend, when filed, are rarely successful.

The study confirms what the public, and certainly the patent bar, has suspected since the AIA created the PTAB to handle IPRs, CBMs, and PGRs: (1) that Patent Owners very rarely filed motions to amend, and (2) motions to amend, when filed, are rarely successful.

The AIA explicitly provides that a Patent Owner may file a motion to amend the claims of a patent challenged in an AIA trial proceeding before the PTAB. See 35 U.S.C. § 316 (d). A motion to amend may request the cancellation of one or more claims of the patent and/or the substitution of one or more challenged claims with a “reasonable number” of substitute claims. See 35 U.S.C. § 316(d). The AIA simply provides that such a motion may not enlarge the scope of the claim(s) or, as is the case during prosecution, introduce new matter.

According to the study, the PTAB has, as of April 30, 2016, instituted and finally disposed of 1539 trials, with 743 trials instituted and currently pending¹. The study reveals that the Patent Owner has filed a motion to amend in only 192 of the 1539 completed trials (i.e., in only 12% of completed trials), and in only 34 of the 743 currently pending trials (i.e., in only 5% of pending trials). In other words, motions to amend are very rarely filed by Patent Owners during AIA proceedings.

It will come as no surprise that motions that solely seek to cancel claims are granted without much, if any, substantive review and motions that seek to substitute claims are only decided when the panel of judges determines that the challenged claims are unpatentable, as decisions confirming the patentability of originally issued claims render moot motions to amend. Motions to amend are also rendered moot when the case is terminated prior to a final written decision, e.g., as a result of a post-institution termination arising from a settlement between the Petitioner and the Patent Owner.

The study reveals that 17 of the 192 motions to amend filed in completed trials solely sought to cancel claims, and were granted without substantive review, while 57 of the 192 motions to amend were rendered moot either because the panel of judges found the originally issued claims patentable (this happened 16 times) or because the case was terminated prior to a final written decision (this happened 41 times). Thus, to date the PTAB has only considered the merits of 118 motions to amend.

The treatment of these 118 motions to amend will do nothing to quiet critics of the PTAB. Of the 118 motions to amend considered on the merits, PTAB judges denied the motion 112 times, meaning that a motion to amend has been granted or granted-in-part (and denied-in-part) only 6 times. While the study does not shed any light on why these 6 motions were favorably received, the study does indicate that 22 motions were denied solely on procedural grounds (and only 1 motion was denied because the Patent Owner failed to demonstrate patentability of the substitute claims over the prior art in general), and the remaining 94 motions were denied for lack of novelty, obviousness, written description, or failure to satisfy other patentability requirements.

Perhaps anticipating that the study would only encourage critics that allege that the PTAB is overly hostile to motions to amend, Judge Kelly provided an explanation for the frequent denials in his Blog Post:

But unlike in the examination context, the PTAB proceedings must be completed within a year, and there is no time for the back-and-forth between the applicant and the USPTO that happens during prosecution. Instead, the PTAB acts as the final arbiter of these newly proposed claims based solely on the briefing presented to it by the parties – if the PTAB grants such a motion, the new claims will issue (and be enforceable against the public) without any examination to ensure compliance with the statutory requirements for patentability. A disappointed patent owner who believes the PTAB erred in refusing to allow a claim amendment can, of course, seek review from the Federal Circuit.

While Judge Kelly’s explanation makes sense, it is unlikely to provide much comfort to (former) Patent Owners after their motions to amend have been denied, their claims have been canceled, and their only recourse involves an expensive and time-consuming appeal to the Federal Circuit.