Proposed New Motion to Amend Procedure Gives Patent Owners a Fighting Chance at Success

With their proposed new procedure, the USPTO hopes to make claim amendments via a motion to amend more of a reality for patent owners in PTAB trials.

A crucial difference from the current motion to amend procedure is the addition of a preliminary decision. As proposed, a motion to amend may be filed within 1.5 months of an institution decision and a petitioner’s opposition is due 1.5 months after filing of the motion. The PTAB will issue a preliminary decision on the motion to amend within one month of a petitioner’s opposition. This preliminary decision will provide an indication of whether the patent owner has satisfied their statutory and regulatory requirements and whether petitioner is likely to prevail in establishing the unpatentability of the proposed substitute claims. Much like an institution decision, this preliminary decision is not binding on a final written decision.

After the preliminary decision, a patent owner has one month to respond to the preliminary decision via a reply or a revised motion to amend. Petitioner then has one month to file a sur-reply to patent owner’s reply or to oppose the revised motion.

In their PTAB trial, patent owner, Alacritech, Inc., could have benefitted from this new procedure. Intel Corp. v. Alacritech, Inc., Case IPR2017-01391 (FWD Paper No. 81, November 26, 2018). After institution, Alacritech filed a contingent motion to amend several of the claims. A contingent motion to amend is only addressed by the Board in the PTAB trial if the claims are found unpatentable. The Board found Alacritech’s claims unpatentable and thus considered the contingent motion. While petitioner has the burden of showing unpatentability of substitute claims under Western Digital[i] and Aqua Products[ii], patent owner must still satisfy the statutory and regulatory requirements under 35 U.S.C. § 316(d) and 37 C.F.R. § 42.121. Unfortunately for Alacritech, the Board found that the substitute claims failed to meet these provisions.

Specifically, in the FWD the Board found that Alacritech’s motion to amend did not include sufficient explanation to establish adequate written description for the substitute claims. While Alacritech provided written description support in its claim charts, petitioner argued and the PTAB agreed that Alacritech did not adequately explain how the substitute claims were supported by the provided string citations that referenced figures and paragraphs of the disclosure. While that finding would have been enough to deny the motion to amend, the Board also determined that a proposed substitute claim would improperly broaden the scope of the claim. Thus the Board found an additional reason to deny Alacritech’s motion to amend.

As a result of the PTAB trial, the challenged claims are unpatentable and Alacritech was unable to salvage substitute claims via the motion to amend. Yet had the proposed procedure been available to Alacritech, the preliminary decision to the motion to amend would have alerted Alacritech to the deficiencies with their motion. Alacritech could have then fixed these issues via a revised motion to amend.

The time period for the request for comments on the proposed motion to amend procedure ended December 21st and the new procedure is expected to soon take effect in the new year in the form of a pilot program. Once underway, the new motion to amend procedure will apply to all trials instituted after commencement of the pilot program.

Please also see our article from last month outlining the basics of the proposed motion to amend procedures.