Motion to Amend: Much to Admire?

by | Jul 26, 2023 | Amendment Practice, PTAB News, PTAB Trial Basics

By Alex Li and Matt Johnson –

Motions to amend (MTA) are becoming a more frequently used tool for patent owners litigating before the Patent Trial and Appeal Board (PTAB).  When a patent is being challenged in an inter partes review (IPR) or post-grant reviews (PGR) before the PTAB, the patent owner has the option of filing a motion to amend the patent’s claims.  Such MTAs, however, were rarely granted in the beginning years of the American Invents Acts.  But over the past few years, the PTAB has enacted a MTA Pilot Program that favors patent owners’ use of this procedure.

In Pelican Biothermal, LLC, v. VA-Q-Tec AG, IPR2021-00085, Paper 35 (June 16, 2023), the panel of judges ruled that only one Motion to Amend claim of the challenged patent was invalid, confirming the rest as not unpatentable.  The patent-in-suit, U.S. Patent No. 10,766,685, was issued in 2020 and directed to a thermal-insulated shipping container for “temperature sensitive materials.”  At exactly nine months after the patent’s issuance, the petitioner Pelican Biothermal filed a PGR petition challenging 28 of the 48 claims in the ’685 patent, alleging that the patent was anticipated by Pelican’s NanoCool products.

After the PTAB’s Decision to Institute, the patent owner VA-Q-Tec utilized the MTA Pilot Program and filed an MTA that canceled all of the claims being challenged, and substituted them with an amended set of 20 claims.  As a part of the MTA Pilot Program, the PTAB issued its Preliminary Guidance containing the PTAB’s “initial, preliminary, non-binding views” on the reasonable likelihood that the substitute claims are unpatentable.  In particular, the Preliminary Guidance outlined issues including written support issues, anticipation, and obviousness.  Under the MTA Pilot Program, patent owners have a further opportunity to revise the amended claims based on the Preliminary Guidance.  VA-Q-Tec used this opportunity to present an updated set of 13 claims on which the PTAB had largely expressed favorable views.

Because of the patent owner’s MTA, the Final Written Determination acknowledged that “no originally challenged claims remains,” and it detailed findings that mostly elaborated on the views expressed in the Preliminary Guidance.  Only one MTA claim, claim 64, was determined to be anticipated by Pelican’ product as well as being obvious in view of prior art publications.  The rest were deemed not unpatentable.

Takeaway

For patent owners, the MTA Pilot Program has elevated MTA from a niche status to a legitimate avenue for surviving an IPR or PGR.  Patent owners can potentially obtain a set of “blessed” claims that have the best chance of success.

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Matthew Johnson

Partner at Jones Day
Matt Johnson is one of the Firm's primary contacts on practice before the PTAB. Currently co-chairing the Firm's PTAB subpractice and involved in proceedings at the Board since the first day of their availability in September 2012, Matt regularly represents clients as both petitioners and patent owners at the Board. He further works as an advocate for clients in appeals from Board proceedings at the Federal Circuit.