The Patent Trial and Appeal Board community of petitioners, patent owners, practitioners, PTAB judges and U.S. Patent and Trademark Office administrators has its hands full ensuring pending PTAB proceedings comport with last month’s U.S. Supreme Court decision in SAS Institute Inc. v. Iancu (April 24, 2018). This flare-up has temporarily drawn the spotlight away from another hot PTAB topic: motions to amend.

Since their inception, PTAB post-grant review procedures have drawn criticism by some for limited number of cases in which the PTAB has granted a patent owner’s motion to amend. More recently, however, decisions by the U.S. Court of Appeals for the Federal Circuit and subsequent guidance by the PTAB have made moving to amend a more attractive strategy for patent owners. Patent owners have started to take notice, as exemplified by the fact that the number of motions to amend filed halfway into fiscal year 2018 already matches the total number of motions filed in 2017.1

In dealing with the SAS fallout, some may have overlooked a recent order providing the PTAB’s most up-to-date guidance on motions to amend, Western Digital Corporation, v. Spex Technologies Inc.2 On June 1, 2018, the PTAB designated this order precedential and de-designated its earlier orders on motions to amend in MasterImage 3D Inc. v. RealD Inc.3 and Idle Free Systems Inc. v. Bergstrom Inc.4

In Western Digital, the panel synthesized the Federal Circuit’s recent decisions in Aqua Products Inc. v. Matal,5 Bosch Automotive Service Solutions LLC v. Matal,6 and a subsequent Bosch order on rehearing to make clear that “a patent owner does not bear the burden of persuasion to demonstrate the patentability of substitute claims presented in a motion to amend.“7 Instead, “the burden of persuasion will ordinarily lie with the petitioner to show that any proposed substitute claims are unpatentable by a preponderance of the evidence,” although ”[t]he Board itself also may justify any finding of unpatentability by reference to evidence of record in the proceeding.“8

Western Digital takes the PTAB’s Nov. 21, 2017, “Guidance on Motions to Amend in View of Aqua Products” a step further regarding the obligations of the petitioner. In its guidance, the PTAB said that ”[t]he Board will not place the burden of persuasion on a patent owner” and that “the Board will proceed to determine whether the substitute claims are unpatentable by a preponderance of the evidence based on the entirety of the record, including any opposition made by the petitioner.“9 But the PTAB did not go so far as to say that the burden of persuasion will ordinarily lie with the petitioner as it did in Western Digital.

Moving beyond the burden-of-persuasion issue, Western Digital also spells out what the PTAB typically expects to see in future motions to amend:

  • Contingent Motions to Amend: The PTAB will “ordinarily treat a request to substitute claims as contingent” unless the patent owner specifies otherwise.10 But ”[a] request to cancel claims will not be regarded as contingent.“11
  • Number of Substitute Claims: The order explains that ”[t]here is a rebuttable presumption that a reasonable number of substitute claims per challenged claim is one (1) substitute claim.“12 But ”[a] patent owner may rebut this presumption upon demonstration of a need to present more than one substitute claim per challenged claim” and “should explain in the motion to amend the need for the additional claims and why the number of proposed substitute claims is reasonable.“13
  • Respond to a Ground of Unpatentability Involved in the Trial: The PTAB will “review the entirety of the record to determine whether a patent owner’s amendments respond to a ground of unpatentability involved in the trial.“14 But this rule (42.121(a)(2)(i)) does not require “that every word added to or removed from a claim in a motion to amend be solely for the purpose of overcoming an instituted ground.“15 For example, in an IPR, the motion to amend may seek additional changes to address potential Section 101 or 112 issues.16 Additionally, “a patent owner may not seek to broaden a challenged claim in any respect.“17
  • Scope of the Claims: A motion to amend must “set forth written description support for each proposed substitute claim as a whole, and not just the features added by the amendment.“18 The motion should cite “to the original disclosure of the application, as filed, rather than to the patent as issued.“19 This showing must be in the body of the motion, not in the claim listing.20 If the patent owner relies on the benefit of priority of an earlier-filed application, the motion must “set forth the support in an earlier filed disclosure for each claim for which benefit of the filing date of the earlier filed disclosure is sought.“21
  • Claim Listing: The required claim listing may be filed as an appendix to the motion and does not count toward the page limit. It cannot contain any substantive briefing.22
  • Page Limit: The default page limit for the motion and opposition is 25 pages, but the parties may contact the board to request additional pages or briefing. The parties may submit additional testimony and evidence in support of the motion or opposition.23
  • Duty of Candor: The parties’ duty of candor includes “a patent owner’s duty to disclose to the Board information of which the patent owner is aware that is material to the patentability of substitute claims, if such information is not already of record in the case.“24 This includes information material to “each added limitation,” “even if it does not include the rest of the claim limitations.“25

It will be interesting to see how parties implement this new guidance on motions to amend and whether it will translate to more successful motions to amend.