As first discussed with the 50+ participants at the inaugural Global IP Strategy Conference held at our firm’s offices on Friday March 9, 2018, the Federal Circuit’s October en banc decision in Aqua Products Inc. v. Matal appears to have produced more theoretical discussion than real change in how the PTAB decides motions to amend.
Since November 1, 2017, 28 of 299 patent owner responses (9.4%) contained a reference to a motion to amend, as revealed by our analysis of Docket Navigator data. In the year leading up to the Aqua decision, 24 of 709 PORs (3.4%) contained a reference to a motion to amend.
Despite this uptick in filings, from our initial analysis, there is no statistical difference in motion to amend grant rates before and after the Aqua decision.
At first, the Board was issuing orders requesting additional briefing. For example, allowing patent owners and petitioners to refile all motions to amend and oppositions to comply with Aqua’s burden shift from the patent owner to the petitioner.
But five months after the ruling, the Board is still finding that motions to amend cannot be entered for similar reasons as before Aqua. And even when entered, the facts are atypical. In one case, the motion to amend was entered only after the patent owner entered adverse judgment for the affected claim and showed that the other claims were non-obvious. So it was the adverse judgment and arguments in the POR, and not the motion to amend itself, that led to entry of the motion to amend.
That said, denials as moot have increased, meaning that final written decisions are increasingly finding that petitioners have not met their burden to show that claims are unpatentable. For example, in final written decisions issued in 2016 and earlier, the Board cancelled 81% of the claims that it ruled on. But since the start of 2017, this figure has checked in at only 71% of claims being cancelled. So Patent Owners are prevailing at final written decision more frequently, tempering the need for the Board to turn to contingent motions to amend.