United States: Trending At The PTAB: Navigating A Motion To Amend

During post grant trials before the Patent Trial and Appeal Board, patent owners can attempt to amend their claims by filing substitute claims in a motion to amend.

Such a motion can be made contingent on the PTAB finding one or more original claims unpatentable, such that it effectively launches a parallel proceeding within the inter partes review or post grant review trial, with both parties briefing the validity of the substitute claims concurrently with the patent owner's response and sur-reply, and the petitioner's reply.

Motions to amend are presumed contingent, unless the patent owner indicates otherwise or cancels original claims.¹ If the PTAB finds the originally challenged claims unpatentable based on the petition grounds, then the PTAB evaluates the patentability of the substitute claims over any grounds that the petitioner raised in opposition to the motion.

Although the motion to amend briefing is separate from the patent owner's response and petitioner's reply, the oral hearing and final written decision address all issues related to both the original claims and the substitute claims — if needed. 

Motions to amend have had low success rates since post grant proceedings began in 2012. Over 450 such motions were decided between 2012 and 2023, and 83% of them were denied.²

In nearly half of the denials, the PTAB found that the patent owner failed to carry its burden in bringing the motion.³ Indeed, patent owners must satisfy several threshold requirements for the PTAB to find the substitute claims patentable.

First, the patent owner must submit a reasonable number of substitute claims.⁴ One substitute for each claim challenged in the post grant proceeding is presumed reasonable. Second, the motion must respond to a ground of unpatentability.⁵

The patent owner must make a bona fide effort to change the scope of the claims in a manner that attempts to overcome the grounds raised in the petition. The amendments must narrow the claims; the substitute claims cannot enlarge the scope of the original claims.⁶

Finally, the substitute claims must not introduce new matter.⁷ The prohibition on new matter has proven to be the most troublesome of the threshold requirements for patent owners, because the PTAB often finds that substitute claims go beyond the scope of the patent's disclosure.

Recent decisions have exhibited similar trends. Over the past five months — from October 2023 through February 2024 — the PTAB denied every motion to amend that it addressed in final written decisions.⁸ Setting aside motions that were denied as moot, in six out of the 10 denied motions to amend, the PTAB found that the substitute claims contained new matter.⁹

Before 2019, patent owners had only one chance to file substitute claims that satisfied all threshold requirements and were patentable over petitioner's opposition grounds.

In 2019, the PTAB introduced a pilot program allowing patent owners to change the substitute claims in a revised motion to amend, after receiving initial invalidity grounds from the petitioner and preliminary guidance from the PTAB. The pilot program is currently extended through Sept. 16.¹⁰

On March 1, the PTAB issued a notice of proposed rulemaking, in which the office proposes to make permanent certain provisions of the pilot program for motions to amend.¹¹

Since inception of the pilot program in 2019, 88% of motions to amend have been filed under the pilot program.¹² Patent owner success rates have increased under the pilot program, though the overall success rate remains low.¹³ The pilot program provides several advantages — and challenges — for both patent owners and petitioners.

In the January Danxiao Information Technology Ltd. v. Shenzhen Svakom Technology Co. Ltd. decision, the patent owner revised its motion to amend under the pilot program to add a new mathematical relationship to the substitute claims that the PTAB deemed unsupported by the specification.¹⁴

In its original motion to amend, the patent owner added multiple lengthy limitations to each independent claim.¹⁵ Following the petitioner's opposition and the PTAB's preliminary guidance, the patent owner revised its motion to amend and replaced the claim amendments with new limitations, including a requirement that “the second time length is equal to two times of the first time length.”¹⁶

To support the amendment, the patent owner identified paragraphs in the specification disclosing that ”[i]n one embodiment, the first time period is 5 seconds, the second time period is 5 seconds, [and] the third time period is 10 seconds.”¹⁷

The PTAB agreed with the petitioner that, even though 2x5=10, the specification did not disclose the general “two times” mathematical relationship; thus, the mere mention of 10 and 5 in the specification did not support adding the “two times” mathematical relationship to the claims.¹⁸ The PTAB concluded that the substitute claims contained new matter and denied the motion to amend.¹⁹

The recent Danxiao decision raises practice tips for patent owners and petitioners when handling amendments during post grant trials. Patent owners should beware of claim language that pushes the boundaries of the patent's disclosure.

Although the U.S. patent system does not require explicit support for claim language in the specification, the claim language should have strong support in the original application and/or priority document, or the substitute claims may be vulnerable to a written-description challenge. If there is such a risk, then varying the scope of amendments between different independent claims may protect some substitute claims if others are denied.

Also, patent owners have a strong advantage in driving the amendment process under the pilot program, being able to revamp the substitute claims after receiving the petitioner's and PTAB's initial reactions. Importantly, petitioners have only five to six weeks to prepare and file an opposition to a revised motion to amend, which is half of the time for responding to the original motion to amend.

Strategic amendments in the revised motion to amend can catch petitioners off guard and unable to find new prior art quickly enough to prepare a strong opposition.

Therefore, although both the original motion to amend and the revised motion to amend must be bona fide attempts to overcome the petition's grounds, the patent owner can benefit from a two-stage strategy of submitting some amendments in the original motion to amend, and then supplementing or revamping the substitute claims in the revised motion to amend, as the patent owner did in Danxiao.²⁰

Petitioners responding to a motion to amend under the pilot program should have an eye toward potential claim limitations that the patent owner may add in a revised motion.

This can be challenging when the patent specification is lengthy or detailed, but petitioners should endeavor to find prior art early that covers features they expect the patent owner to introduce in a revised motion. Comprehensive searching early in the post grant proceeding will benefit petitioners faced with little time to oppose a revised motion. 

Petitioners should also explore all potential invalidity attacks when drafting oppositions.

In some rare cases, the PTAB may raise invalidity grounds sua sponte in its preliminary guidance following the original motion to amend.²¹

All invalidity grounds are fair game, including lack of statutory subject matter under Title 35 of the U.S. Code, Section 101, indefiniteness or lack of written description under Title 35 of the U.S. Code, Section 112, and prior art-based grounds under Title 35, Sections 102 and 103.

Finally, when opposing a motion to amend, petitioners should consider whether the prior art in the original petition grounds also covers the amended claims.

Adjusting the petition grounds to cover the substitute claims can be an effective tool, in addition to applying new prior art to the substitute claims.

In one recent proceeding, the PTAB issued preliminary guidance agreeing with the petitioner that the substitute claims were likely unpatentable over the original petition grounds, as well as new prior-art grounds raised in the opposition.²²

By establishing that the substitute claims are likely unpatentable over the original petition grounds, petitioners may force patent owners to submit more aggressive claim amendments that cross into the realm of new matter.

As the motion to amend pilot program continues until, and possibly beyond, September, petitioners and patent owners should remain mindful of the strategic considerations and challenges of these difficult motions.

Footnotes

1. U.S. Patent & Trademark Office, Patent Quality Chat – New pilot program for motions to amend in AIA trial proceedings 13 (Apr. 9, 2019),  https://www.uspto.gov/sites/default/files/documents/Patent%20Quality%20Chat%20Webinar%20Motions%20to%20Amend%20PTAB%204_2019.pdf.

2. U.S. Patent & Trademark Office, Patent Trial and Appeal Board Motion to Amend (MTA) Study – Update through March 31, 2023, at 16,  https://www.uspto.gov/sites/default/files/documents/mta_installment_8_.pdf [hereinafter “MTA Study”].

3. Id. at 19.

4. 35 U.S.C. §316(d)(1)(B).

5. 37 C.F.R. §42.121(a)(2)(i).

6. 35 U.S.C. §316(d)(3); 37 C.F.R. §42.121(a)(2)(ii).

7. 35 U.S.C. §316(d)(3); 37 C.F.R. §42.121(a)(2)(ii).

8. Danxiao Info. Tech. Ltd. v. Shenzhen Svakom Tech. Co. , PGR2022-00050, Paper 36 at 27 (PTAB Jan.19, 2024); Pioneer Pet Prods. LLC v. Oil-Dri Corp. of Am. , IPR2022-01138, Paper 36 at 66 (PTAB Dec. 19, 2023); Apple Inc. v. Aire Tech. Ltd.  , IPR2022-01137, Paper 31 at 56 (PTAB Dec. 15, 2023); Motorola Mobility LLC v. Largan Precision Co. , IPR2022-01022, Paper 59 at 77 (PTAB Dec. 8, 2023); AMCOL Int'l Corp. v. Oil-Dri Corp. of Am. , IPR2022-01107, Paper 44 at 64 (PTABNov. 29, 2023); Eden Park Illumination Inc. v. Neister , IPR2022-00381, Paper 55at 79 (PTAB Nov. 14, 2023); Moleculight Inc. v. Swift Med. Inc.  , PGR2022-00041, Paper 26 at 36 (PTAB Nov. 3, 2023); FedEx Corp. Servs., Inc. v. Roambee Corp. , IPR2022-00934, Paper 41 at 89 (PTAB Nov. 3, 2023); NeuroDerm Ltd. v. AbbVie Inc. , PGR2022-00040, Paper 77 at 51 (PTAB Oct. 31, 2023); Ericsson Inc. v. Koninklijke KPN N.V. , IPR2022-00557, Paper 34 at 5 (PTABOct. 4, 2023).

9. Danxiao, PGR2022-00050, Paper 36 at 25; Pioneer, IPR2022-01138, Paper 36 at 64; Apple, IPR2022-01137, Paper 31 at 41, 44; AMCOL, IPR2022-01107, Paper 44 at 62; Eden Park, IPR2022-00381, Paper 55at 78; NeuroDerm, PGR2022-00040, Paper 77 at 25.

10. 87 Fed. Reg. 60,134-35 (Oct. 4, 2022).

11. Motion to Amend Practice and Procedures in Trial Proceedings under the America Invents Acts before the Patent Trial and Appeal Board,  https://public-inspection.federalregister.gov/2024-04127.pdf (Mar. 1, 2024).

12. MTA Study, supra note ii, at 22.

13. Id. at 17.

14. Danxiao, PGR2022-00050, Paper 36 at 24-25.

15. Id., Paper 8 at 3-8 (PTAB Apr. 24, 2023).

16. Id., Paper 36 at 17-21 (PTAB Jan. 19, 2024) (citations omitted).

17. Id. at 24 (alteration in original) (citation omitted).

18. Id.

19. Id. at 24-25.

20. Danxiao, PGR2022-00050, Paper 22 (PTAB Aug. 22, 2023).

21. See FedEx, IPR2022-00934, Paper 21 at 20-21 (PTAB May 16, 2023).

22. Id. at 8, 13.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.