Post-grant proceedings theoretically allow the patent owner to amend the claims of a challenged patent, which can be a significant advantage. However, in practice, the patent owner has been allowed to amend claims in only a handful of the thousands of cases filed. That dismal showing has prompted calls for more balance between patent owners and petitioners. Action by the PTAB, the courts or Congress could make amendments a more viable option. What can petitioners do in the meantime, in the face of this uncertainty?
- Petitioners now need to visualize how the prior art invalidates the claims as they are and how they might be after amendment. Petitions that stretch the prior art to meet the claims by relying on a broad reading might be enough to win initially, but will be ripe for defeat by claim amendments that negate that broad reading.
- Petitioners should be ready to oppose potentially threatening amendments even before the patent owner seeks to amend, and preferably before their petition is even filed. The patent’s specification should be studied to understand what amendments might be made such that the patent would still cover products accused of infringement. Once the patentee files the actual motion, challengers should expect less than three months to respond. In addition to enabling an opposition within the tight deadlines, locating the right prior art early opens up options. Where there is a risk of amendments that would result in threatening claims, the petitioner might choose to base the initial challenge on prior art that would hinder threatening amendments but at the cost of giving the patent owner advance notice of the prior art, or save that prior art for an opposition to a motion to amend.
- Petitioners might also be judicious in selecting which claims to challenge. The PTAB’s rules generally allow a one-for-one substitution of challenged claims for amended claims. As more claims are challenged, the patent owner has more options for proposing amendments, as different claims might be amended in different ways. In the extreme, the petitioner might opt to forego a post-grant challenge entirely and save an invalidity challenge for litigation where amendments are not possible.
However, for the petitioner, amendments are not necessarily all bad. Because amendments do not become effective until after the PTAB issues a certificate, the delay between when amendments are proposed and when they are effective creates time for design-around strategies or other actions to avoid liability under the patent.