USPTO Seeks Comments on Proposed Changes to Motion to Amend Practice in AIA Trials

From the USPTO: The United States Patent and Trademark Office (USPTO) has published a Request for Comments (RFC) about a proposed procedure for motions to amend filed in inter partes reviews, post-grant reviews, and covered business method patent reviews (collectively AIA trials) before the Patent Trial and Appeal Board (PTAB).  In essence, the proposal includes:  providing the parties with the Board’s initial assessment of the proposed amendment early in the process; providing meaningful opportunity to revise, and oppose, proposed amendments; and ensuring that the amendment process concludes within the 12-month statutory timeline. The proposal is based upon six years of experience conducting AIA trials during which time more than 350 motions to amend have been filed.

 A timeline of the proposal can be reviewed here.

Specifically, the USPTO seeks public input on a proposed amendment process that would involve a preliminary non-binding decision by PTAB regarding the merits of a motion to amend.  Such information may include whether the motion, in view of petitioner’s preliminary opposition, is reasonably likely to meet statutory and regulatory requirements and whether the proposed substitute claims are reasonably likely to meet patentability requirements. The proposed process would also provide an opportunity for a patent owner to revise, and petitioner to oppose, its motion to amend and proposed substitute claims in view of the preliminary amendment decision. The USPTO also seeks comments on the proposed timelines, designed to ensure completion within 12-months from institution. The USPTO also seeks comments in response to a number of specific questions included in the RFC. 

In addition, the USPTO seeks input regarding whether PTAB should continue to allocate the burden of persuasion regarding patentability of substitute claims as set forth in Western Digital Corp. v. SPEX Techs., Inc., Case IPR2018-00082 (Paper 13) (PTAB April 25, 2018) (informative), as well as any comments on motion to amend practice before PTAB generally. 

The USPTO seeks written comments on these topics on or before December 14, 2018.  Written comments should be submitted to TrialRFC2018Amendments@uspto.gov

The full text of the Request for Comments on the motion to amend proposal is published in the Federal Register.

47 thoughts on “USPTO Seeks Comments on Proposed Changes to Motion to Amend Practice in AIA Trials

  1. 6

    Dennis Crouch, Nov. 2016: These incidents are not supposed to happen here, but they are happening. As Dan Rather writes “now is a time when none of us can afford to remain seated or silent. We must all stand up to be counted. . . . I believe there is a vast majority who wants to see this nation continue in tolerance and freedom. But it will require speaking.”

    It’s two years later and things are a hundred times worse.

    1. 6.1

      and gee, it’s because your rants/feelings have been expunged more than any other single poster’s post have been expunged.

      Any other single…? How about more than ALL other posters’ posts.

      Or maybe you should recognize that your choice of forum for your feelings is not effective (either for the purpose of this blog OR for your own special re-purposing), and maybe — just maybe — you should find a more appropriate outlet for those feelings.

      Maybe if you did not waste your time on a patent blog, your heart’s content could be achieved?

  2. 5

    Thank you.

    Maybe now Malcolm may put his energies into actually addressing patent law issues and nuances thereof.

    Such as, for example, that it really does matter that no actual examination is provided for in the Congress-written IPR program of the AIA.

    Maybe he will do more than scoff (as he flaccidly does at 3.2).

    1. 5.1

      no actual examination is provided for in the Congress-written IPR program of the AIA

      Define “actual examination” please. What are the essential requirements that must be met in order for the examination of a claim or a proposed amendment to be “actual”?

      1. 5.1.1

        Thank you for asking, with “please,” even.

        See my posts already on this topic on this thread, as I explain situations in which actual examination would be required (and no, I will not play your Br’er Rabbit game of “defining” anything – you supposedly are a patent attorney and should know full well what actual examination entails).

  3. 4

    Scott’s Patents Post Grant blog notes that: “The proposal provides for a pilot program in which the parties are provided with an initial Board assessment of the proposed amendment. The assessment is provided early in the process; providing meaningful opportunity to revise and oppose proposed amendments; and ensuring the amendment process concludes within the 12-month statutory timeline.”
    However, he projects that few patent owners will take advantage of this pilot program, for reasons including this initial Board assessment of the proposed amendment taking place before the patent owner has submitted its IPR trial defenses challenging the petitioner’s 103 or 102 art and assertions.

    1. 4.1

      ” … few patent owners will take advantage of this pilot program, for reasons including this initial Board assessment of the proposed amendment taking place before the patent owner has submitted its IPR trial defenses challenging the petitioner’s 103 or 102 art and assertions.”

      Likely true; yet I wonder whether — assuming patent owners will have the right to “drop out” of the amendment process at any time prior to the final amendment step — that at least applying for amendments might at the very least insure that the petitioners cough up ALL their best alleged prior art early in the AIA trial process …

      1. 4.1.1

        Pro Say, “insure that the petitioners cough up ALL their best alleged prior art early in the AIA trial process” is already the case for original claims. IPR petitioners do not get to add new prior art that was not in their petition for 102 or 103 rejection purposes.
        [If the patent owner argues a claim language interpretation other than plain meaning the petitioner MIGHT get to show some art contemporary with the patent’s filing date as to what a POSITA at that time would understand that term to mean.]

  4. 3

    Your last paragraph makes the valid point that many dependent claims have never been independently examined. But the IPR’s APJ mix of former examiner and litigator patent attorneys is not unaware of that, and even now in an IPR they must examine their patentability [under 112 as well as 103, unlike original claims] if and when they are presented as substitute claims. Even if that petitioner chooses not to even oppose substitute claims because they are not of infringement concern to them.

    1. 3.1

      This was a response to 1.1

    2. 3.2

      Billy: The petitioner is certainly not an Examiner.
      The “neutral” Trial board is certainly not an Examiner.
      The patentee is certainly not an Examiner.

      Because Congress really cares most of all about the job title of the person who is evaluating the propriety of claim amendments. Sure. Makes total sense.

      News flash: Congress passed the AIA and created the IPR system, which included the possibility of claim amendments. There is nothing at all “improper” about claim amendments being entered during the course of an IPR. Nothing.

      Please find another wad of wet t0 ilet paper to throw against the wall, since you can’t seem to help yourself. Maybe you want to argue that amending claims during an IPR is unconstitutional? And therefore the whole regime must be unconstitutional, including all the rest of the AIA? Right? Wasn’t that the sort of deep thinking that kept the maximalists juices flowing as they tried to relieve their “economic anxiety” (LOL) over the past several years?

    3. 3.3

      [M]any dependent claims have never been independently examined.

      A few thoughts here:

      (1) I routinely receive 102/103 rejections where (e.g) Claims 1-4, 7, 8, & 10-20 are rejected over X in view of Y, and Claims 1-10 & 15-20 are rejected over X in view of Z. This tells me that most of time Examiners really are examining each dependent claim individually.

      (2) Even where the dependent claims have not been properly examined, what of it? I am not clear on what the legal significance of a sloppy examination is supposed to be. Obviously a good examination is better than a bad one, but a granted claim is a granted claim, each one subject to the exact same presumption of validity as any other.

      1. 3.3.1

        How many times have you been able to overcome rejections to dependent claims because the rejection to the independent claim was faulty, and the additional references (for the dependent elements) does not fix the fault in the references of the independent claim?

        This happens A LOT.

    4. 3.4

      and even now in an IPR they must examine their patentability [under 112 as well as 103,…

      “They” are neither Examiners nor do they have authority to examine (that’s kind of the point in pointing out the infirmity of the AIA’s IPR construction).

      And obviously, this nuance goes right over Malcolm’s head.

    5. 3.5

      [T]he IPR’s APJ mix of former examiner and litigator patent attorneys is not unaware of that, and even now in an IPR they must examine their patentability [under 112 as well as 103, unlike original claims] if and when they are presented as substitute claims.

      As in 2.3, I am not sure what you are trying to get at here, Paul. Why does it matter whether or not the APJs have “examine”d the claims that emerge from an IPR? What is the concern here?

      1. 3.5.1

        Greg, if the substitute claim is purely a prior dependent claim in the patent, and has some 112 support, it would not seem to make a practical difference. But allowing a substitute amended claim with new claim elements or combinations never examined to distinguish over the cited art without any examination is allowing an unexamined new claim to be inserted into the patent for the rest of its life.

        1. 3.5.1.1

          and has some 112 support”…

          …is NOT enough for an actual examination.

          I’ve explained this already Paul: if an amended claim is more “claim scope” than an allowed dependent claim, and even less “claim scope” than a now removed independent claim, that new “fence line” of scope was never examined – even if support (for 112 purposes) is present, no Examiner cleared that fence line of scope.

          Narrower than a removed claim scope and 112 support are NOT enough (if that amendment is still wider than dependent claim scope).

        2. 3.5.1.2

          [A]llowing a substitute amended claim… never examined… is allowing an unexamined new claim to be inserted into the patent for the rest of its life.

          And? This is not like dividing by zero, or accelerating beyond light speed. There is no rip in the fabric of the universe that results from a claim proceeding to grant without a complete examination process.

          If a claim narrower than the previously allowed claims emerges from an IPR, society at large is no worse off than it had been before the IPR. The only person plausibly harmed by this is the patentee, and s/he is the one asking for the amendment, so evidently s/he is not much bothered. What is the problem?

          1. 3.5.1.2.1

            And? This is not like dividing by zero, or accelerating beyond light speed. There is no rip in the fabric of the universe that results from a claim proceeding to grant without a complete examination process.

            LOL

            Great catch-all “argument”, Greg. I’ll be sure to remember this the next time some terrible proposal I disagree with comes my way. We’ll call this the DeLassus Gambit.

            That said, whatever claim amendment procedure ultimately emerges from this “change”, it had better involve somebody other than the patentee — and preferably more than just somebody — ensuring that 101, 103, and 112 requirements are met. I’m thinking the most likely parties are the petitioner and someone at PTAB.

            1. 3.5.1.2.1.1

              I’m thinking the most likely parties are the petitioner and someone at PTAB.

              Neither of those would actually be Examiners….

              1. 3.5.1.2.1.1.1

                Neither of those would actually be Examiners….

                Nobody cares about the title, Billy.

                (the irony of Billy focusing on the title rather than the procedure is more than a little bit amusing, and I’m sure Billy has no idea …)

                1. Nice strawman, as “focus on title” is NOT as shallow as you are thinking.

                  The title is reflective of the job and what the job entails.

                  That you continue to try to denigrate with your “Billy” comment while YOU are not getting this — and trying to pass this off as ironic — is stultifying.

  5. 2

    A key comment is likely to be a question: if, and when [and that should be relatively soon after the proposed amendment] the petitioner could provide an additional patent or publication reference disclosing the feature of the amended claim which the patent owner asserts 103 distinguishes over the art already of record.
    Other questions were raised in comments in the preceding blog on this proposal.

    1. 2.1

      Paul’s post brings to mind a prior asked (but never answered) question as to (yet another) fraility associated with how Congress constructed the post-grant mechanism:

      There is no true examination (by a duly appointed executive agency examiner) of any claim amendments.

      The petitioner is certainly not an Examiner.
      The “neutral” Trial board is certainly not an Examiner.
      The patentee is certainly not an Examiner.

      Once the “outer demarcation” of a (spectrum) of claim scope is removed (which is what happens when a claim amendment is made), the fact that a claim must be more narrow than the now-removed outer demarcation does NOT establish a new proper** demarcation.

      **proper, of course, being related to a scope that has been actually examined — by an executive agency Examiner.

      Being “more narrow” does NOT provide any type of “saving grace” — for example, more narrow dependent claims often “get by” based on the wider independent claims getting by; thereby lacking an appreciable evaluation of where exactly the spectrum below the original demarcation “actually is.”

      1. 2.1.1

        Anon — understand what you’re saying, but isn’t a petitioner (who presumably has plenty of money to throw at such proffered amended claims as opposed to what a time-constricted, (potentially) prior art-limited Examiner does) more likely to find invalidating 102/103 art than an Examiner?

        1. 2.1.1.1

          Pro Say,

          You are correct that a petitioner may be more proficient.

          That does NOT make the petitioner into an Examiner.

          Recall that the presence (and level) of the statutory presumption of validity attaches because an Examiner — under authority of the Executive Branch — has performed their job.

          A petitioner, even one more diligent LACKS that government chain of authority.

          1. 2.1.1.1.1

            …note as well (hat tip to Paul) that any particular petitioner may be solely concerned with aspects of clearance for their own needs, and thus may not be concerned at all with any type of “examination” of particular amended claims – this feeds back into why examination must be by a properly authorized (and designated) USPTO Examiner.

            Also, in a comment building off of Paul’s APJ comment up at 2, the PTAB greatly expanded and can scarcely — even if we wanted to; which we do not — be considered “Super Examiners,” which is what the early judges on the pre-PTAB mechanism were “labeled” once upon a time.

            Finally, the Director has also somewhat recently reflected on Court directions that the Judges ARE to act as neutral arbitors and it is the Petitioner that is the “antagonist” to the patentee as “protagonist.” Examination is NOT provided by the Office in a post grant proceeding.

            1. 2.1.1.1.1.1

              … yet, under the “we are all the same agency” construct; given the APJs presumable(?) ability to raise their own 102/103 rejections de novo; haven’t allowed narrowed (and replacement?) claims in fact been properly allowed under the Executive branch?

              Otherwise, wouldn’t yet another patent can of worms be opened; centered around arguments over whether or not such allowed narrowed or replacement claims were valid post-PTAB?

              1. 2.1.1.1.1.1.1

                APJs are not Examiners – that can of worms IS open.

                That’s the point.

                1. Fed. Cir. judges are far more clearly not examiners, yet they frequently reverse D.C. decisions and PTAB decisions to find claims invalid over the art and testimony of record.

                2. Paul,

                  Adjudication of “not invalid” is not the same as examination of “valid.”

                  The other blog had a dialogue on this point. I will see if I can find it and provide a link.

              2. 2.1.1.1.1.1.2

                [G]iven the APJs presumable(?) ability to raise their own 102/103 rejections de novo…

                Just to be clear, the APJs in an IPR or PGR have no ability to raise 102/103 issues de novo. That was the holding of the SCotUS’ recent SAS Inst. decision. The PTAB can adjudicate issues raised by the parties, and that is all. The PTAB has no authority either to (1) raise new issues not raised by the parties or (2) ignore an issue properly raised by the parties.

                The PTAB in an ex parte appeal from an examiner’s rejection can raise new rejections of its own, but the same PTAB when adjudicating an IPR has no such latitude.

      2. 2.1.2

        Being “more narrow” does NOT provide any type of “saving grace” — for example, more narrow dependent claims often “get by” based on the wider independent claims getting by; thereby lacking an appreciable evaluation of where exactly the spectrum below the original demarcation “actually is.”

        They “get by” the prior art because (in theory) they are already “by” the prior art by virtue of incorporating the limitations of the dependent claims.

        A lack of support is definitely a concern but that’s relatively easy to check (Applicant shows where support for the amendment may be found; Examiner looks at the cite to confirm that the support is there). The other concern would be limitations in dependent claims that are actually broadening but those are also relatively easy to spot.

        1. 2.1.2.1

          There is NO Examiner in the process Malcolm.

          Whether it would be “easy” or not is not the point.

          Also, mere “support” is also NOT enough – the “incorporate the limitations” misses the point in that it is often the independent claim that sets the “outer perimeter (permissible scope), and the dependent claims will often get by because the independent claims get by (without regard to additional rejections as has been pointed out by Greg).

          You may want to spend a moment and actually try to think through this instead of your usual reaction because a post is from “anon.”

      3. 2.1.3

        where exactly the spectrum below the original demarcation “actually is.”

        The “spectrum” on the narrow side is what is written in the specification.

        1. 2.1.3.1

          “Written in the specification” and “support” are not enough.

          Come man, stop and think before you post.

      4. 2.1.4

        Is there a particular impact that you have in mind, or is this more of an academic observation? I have seen some suggestions that the presumption of validity should not apply to patents which are amended in post-grant proceedings. Is that the argument you are wanting to make?

        1. 2.1.4.1

          JCD,

          The impact is that the mechanism devised by Congress is (fatally) flawed.

          Taking away the presumption is ALSO not something that the Board is empowered to do (for items that they “re-release” back into a patent.

          When they “re-release” AS a patent, that patent is once more imbued with ALL the sticks in the bundle of property rights; and that DOES include the presence and level of the presumption. The Executive Office simply was not granted authority to deny that stick.

          And this issue is far more than merely “academic” (even if it has not yet shown itself in the courts).

        2. 2.1.4.2

          I have seen some suggestions that the presumption of validity should not apply to patents which are amended in post-grant proceedings.

          I should hope that no one is making such an argument, because that would be legally erroneous. As Ron Katznelson ably demonstrated in his i4i amicus brief, the Supreme Court was requiring proof of invalidity by a clear and convincing standard even before there was a patent office. Far from it being the case that clear-&-convincing attaches because of the patent examiner’s nihil obstat, it is exactly the other way around. Rather, once Congress realized that the courts were going to require c-&-c evidence to invalidate a granted patent, Congress said to itself (as it were) “gosh, if it is that hard to tank one of these things, we really need some up-front pressure testing before we let it loose in society.”

          Examination is one such means of providing that pressure-testing, but it need not be the only such method. If (as seems evident from the state of the statute), Congress is content to let that pressure testing come in the form of a PTAB trial, that is also fine. In any event, the patent would enjoy a c-&-c presumption even with no such pressure-testing, so any one means of pre-clearing the grant is equally suitable as any other for ensuring that a c-&-c presumption will attach once granted.

          1. 2.1.4.2.1

            Greg,

            Thanks for the great pointer to that brief.

          2. 2.1.4.2.2

            Greg,

            There is irony aplenty, as the brief you reference is based on the granted patent being a Private personal property right as opposed to a Public Franchise property right (and it is not a small difference that the Government Franchisor is taking the presence and level of presumption of validity (one of the sticks in the bundle of that property right) AT the institution decision point.

            (Someone else may want to repost this if Greg has his “anon” filter on — he his missing a lot of good stuff here.

            1. 2.1.4.2.2.1

              Somewhat absent from the brief is the notion of a patent (granted) is the “realization” or the exchange in a Quid Pro Quo manner between an inventor and the state that is taking the inventor’s inchoate right and turning that inchoate right into a full legal property right (with certain sticks in the bundle of that property right).

              The Oil States case changes that bargain.

              Focus on the “chain of title” elucidates BOTH the brief offered by Ron Katznelson as well as just why Oil States was such a big deal.

              I would posit that the separate issue here may well suffer from the wrinkles of the change from Private personal to Public franchise; given that those espousing “Public franchise” may well not consider the traditional parameters of patents, inchoate rights, and the Quid Pro Quo.

  6. 1

    Amendments should only be allowed to address prior art, and not section 112 issues. Otherwise the notice function of the patent means nothing.

    1. 1.1

      Amendments need not address 112 issues precisely because 112 issues may not be a part of the challenge in an IPR (of course, the other post grant review mechanism is different).

    2. 1.2

      ? JB, my understanding is that 112 re IPR claim amendments lies in requiring a showing that the proposed amendment has specification support, not some other possible 112 issue.

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