The PTAB may, where good cause exists, extend a trial up to six months beyond the required twelve month length pursuant to 35 U.S.C. §316(a)(11). On October 5, 2017, the PTAB issued its first “good cause” extension of a trial in Minerva Surgical, Inc. v. Hologic, Inc., IPR2016-00868 (PTAB Oct. 5, 2017) (Papers 56, 57). Before a PTAB panel may extend a trial beyond the statutory twelve month deadline, 37 C.F.R. § 42.100(c) requires that the Chief Judge of the PTAB must determine that the requisite good cause exists. See Chief Judge Ruschke’s Grant here.
In Minerva, Patent Owner’s contingent Motion to Amend remained pending when, two days before the twelve month statutory deadline was set to expire in Minerva, the Federal Circuit issued its en banc decision in Aqua Products, Inc. v. Matal, No. 2015-1177 (Fed. Cir. Oct. 4, 2017). Aqua Products addressed the burden of proof that the PTAB applies when considering a Motion to Amend. Recognizing that the Aqua Products bore directly on the PTAB’s consideration of Patent Owner’s pending Motion to Amend, Chief Judge Reschke sua sponte considered whether good cause existed for an extension. The Patent Owner did not request the extension.
In his Grant of Good Cause Extension, pursuant to § 316(a)(11) and § 42.100(c), Chief Judge Ruschke noted that the Aqua Products decision may affect the parties’ arguments and the PTAB’s analysis of those arguments and the evidence submitted related to the Motion to Amend. The Chief Judge also explained that the Aqua Products decision itself was a 148 page opinion comprising five separate opinions, and in part explained his determination that good cause existed because of the “limited amount of time for the Board and parties to analyze the guidance” provided by the Federal Circuit. Having obtained a determination that good cause existed, the PTAB’s panel issued an order extending the time to administer the proceeding.
The PTAB’s decisions in Minerva provide some guidance to practitioners as to when good cause exists for an extension of a trial’s length: when newly issued precedent may affect the PTAB’s analysis. Here, the relief granted by the PTAB was for the panel’s benefit—to give the PTAB sufficient time to digest the Federal Circuits guidance. However, practitioners continue to wait to see a determination of good cause to extend a trial at the request of one of the parties. In light of the Minerva extension, practitioners should keep in mind the PTAB’s burden and ability to digest substantive new legal issues in requesting any extension.