By Christian Roberts, and Daniel Sloan, and Matt Johnson –
On March 4, 2024, the Patent Trial and Appeal Board (“PTAB”) of the United States Patent and Trademark Office (“USPTO”) issued a Notice of Proposed Rulemaking (“NPR”) regarding Motion To Amend (“MTA”) Practice and Procedures in Trial Proceedings under the America Invents Act (“AIA”) before the PTAB. The USPTO proposes to revise its rules of practice to permanently incorporate the MTA Pilot Program. This program allows for the issuance of preliminary guidance in response to an MTA and gives patent owners the option to file an additional revised MTA. Additionally, the proposal aims to clarify that a preponderance of evidence standard applies to new grounds of unpatentability raised sua sponte by the PTAB and that the PTAB may consider all evidence in the record of a proceeding, including evidence provided by the USPTO at the PTAB’s request. The proposed rule would amend 37 C.F.R. §§ 42.121 and 42.221.
Currently, these C.F.R. sections:
- allow a patent owner to file an MTA after conferring with the PTAB;
- provide what contents a patent owner must include in an MTA;
- allow filing of additional MTAs with PTAB authorization on a showing of good cause;
- allocate to patent owners the burden of demonstrating that an MTA complies with necessary statutory and regulatory requirements by a preponderance of the evidence;
- allocate to petitioners the burden to show the unpatentability of substitute claims proposed in an MTA by a preponderance of the evidence, and
- provide the PTAB with authority to grant or deny an MTA. See C.F.R. §§ 42.121, 42.221.
On the last point, the regulations state that the PTAB can exercise discretion to grant or deny an MTA “in the interests of justice,” but does not specify what burden, if any, the PTAB bears. See C.F.R. §§ 42.121(d)(3), 42.221(d)(3). Instead, the PTAB has stated only that this provision applies in situations when “certain evidence regarding unpatentability has not been raised by either party but is so readily identifiable and persuasive that the Board should take it up in the interest of supporting the integrity of the patent system, notwithstanding the adversarial nature of the proceedings.” 85 Fed. Reg. 82924, 92927 (citing Hunting Titan, Inc. v. DynaEnergetics Europe GmbH, IPR2018–00600, Paper 67 at 12-13, 25-26 (PTAB July 6, 2020)). The Federal Circuit has admonished the PTAB’s application standard as too confined and overlooking the basic purpose of IPR proceedings, which is “to reexamine an earlier agency decision and ensure that patent monopolies are kept within their legitimate scope.” Hunting Titan, Inc. v. DynaEnergetics Europe GmbH, 28 F.4th 1371 (Fed. Cir. 2022).
The MTA Pilot Program provides patent owners with two new options when substituting challenged patent claims during an AIA trial proceeding. See 84 Fed. Reg. 56401. A patent owner can i) seek preliminary non-binding guidance from the PTAB before finalizing an MTA, or ii) file one revised MTA without seeking PTAB authorization. The newly proposed rules would make the program and its MTA options permanent to patent owners.
The proposed rules also offers amendments that clarify the scope of the PTAB’s authority when exercising discretion to grant or deny an MTA or raise a new ground of unpatentability in connection with a proposed substitute claim. The proposed rules allow the PTAB to consider and make of record any evidence (A) in a related proceeding before the PTAB or (B) that a court could judicially notice. The proposed rules also require the PTAB to support its exercise of discretion by the same preponderance of the evidence standard the regulation already imposes on patent owners and petitioners.
Notably, the proposed rules remove the restriction where the PTAB could only exercise its discretion “in the interests of justice.” As a result, the USPTO will de-designate the precedential status of PTAB’s decision in Hunting Titan. This change will bring the regulation more in line with the Federal Circuit’s interpretation.
Finally, the proposed rules also clarify that the PTAB may extend deadlines in the MTA timeline upon a showing of good cause.
The deadline to submit comments for the NPR is May 3, 2024.
Matthew Johnson
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