Patentees Squeezed Between Competing PTAB Rules

The rules of the new patentability trials of the America Invents Act (AIA) are designed to ensure timely resolution of patentability disputes within the statutorily mandated 12 month time frame. In particular, the Patent Trial & Appeal Board (PTAB) fashioned their new rules to prevent the notorious delays and complications of the previous inter partes patent reexamination system. One way in which the new AIA post grant proceedings are vastly different from the previous inter partes patent reexamination model is the manner in which claim amendments may be proposed.

In the previous inter partes reexamination system, any number of amended claims could be added or submitted prior to the close of prosecution before the examiner. There was no numerical limit on the number of claims that could be submitted. In fact, it was not uncommon practice for patentees to submit hundreds of new claims. By doing so, patentees made it more difficult for the third party to respond to all issues within their 30 day period, and within page limits. Likewise, the addition of such extensive amendments made examiner/APJ processing all the more tedious and time consuming.

In the new AIA proceedings, Inter Partes Review (IPR) and Post Grant Review, the PTAB provides for a reasonable number of substitute claims. 37 C.F.R. § 42.121/221. The “reasonable” aspect has been explained as a one-to-one correspondence in the typical case. Further restricting the ability to amend is the requirement that amendments be presented within the bounds of a 15 page motion to amend. The combination of these controls strictly limits the ability of patentees to amend in any significant regard, which greatly aids the agency in completing the proceedings in a timely manner.

Yet, patentees argue that these strictly enforced procedural controls are inconsistent with the patentee estoppel that attaches to a failed PTAB proceeding.

A PTAB motion to amend is limited to 15 pages, double spaced, and 14 point font. The motion must include a full listing of the amended claims along with an explanation of support, level of ordinary skill, and an explanation as to non-obviousness. (See Idle Free Systems v. Bergstrom Inc., IPR2012-00027, See Also recent clarification on dependent claim listings ZTE Corp. v. ContentGuard Holdings, Inc., IPR 2013-00136). Patentees seeking to amend their patents before the PTAB have found working within the 15 page limit exceedingly difficult, and page limit extensions rarely granted.

In ZTE, the Board explained its strict amendment requirements and general reluctance to grant page extensions as follows:

[A]n inter partes review is more adjudicatory than examinational, in nature, and that if a patent owner desires a complete remodeling of its claim structure according to a different strategy, it may do so in another type of proceeding before the Office.

While generally speaking this policy position makes sense from a USPTO work flow management perspective, it overlooks the patentee estoppel provision that arguably requires any and all amendments be pursued in the PTAB proceeding.  That is, 42.73(d)(3)(i) provides:

(3) Patent applicant or owner. A patent applicant or owner is precluded from taking action inconsistent with the adverse judgment, including obtaining in any patent:

A claim that is not patentably distinct from a finally refused or cancelled claims ; . . .

(emphasis added)

In other words, patentees that fail to make an amendment before the PTAB are in danger of losing that opportunity thereafter. While it is understandable that the Board continue to simplify IPR, CBM and PGR proceedings as much as possible, the Board should remain mindful of the significant impact an adverse judgement will have on a patentees ability to amend in other proceedings as currently suggested.

To date the Board has shown flexibility in extending page limits for motions to amend where patentees forgo their 60 page response (often times patentees file contingent amendments together with a full 60 page response directed to the unamended claims). Yet, in these instances, only 2-5 additional pages are accorded. It is suggested that where more significant amendment is desired, and a full 60 page response waived in favor of amendment, that the Board adopt a more liberal stance for page extensions so that patentees are not unfairly surrendering subject matter to the patentee estoppel of 42.73(d)(3)(i).