[Federal Register Volume 83, Number 209 (Monday, October 29, 2018)]
[Notices]
[Pages 54319-54326]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2018-23187]
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DEPARTMENT OF COMMERCE
Patent and Trademark Office
[Docket No. PTO-P-2018-0062]
Request for Comments on Motion To Amend Practice and Procedures
in Trial Proceedings Under the America Invents Act Before the Patent
Trial and Appeal Board
AGENCY: United States Patent and Trademark Office, U.S. Department of
Commerce.
ACTION: Request for comments.
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SUMMARY: This Request for Comments seeks public input on certain
practices and procedures that the Patent Trial and Appeal Board
(``PTAB'' or ``Board'') of the United States Patent and Trademark
Office (``Office'' or ``USPTO'') proposes regarding motions to amend
filed in inter partes reviews (``IPR''), post-grant reviews (``PGR''),
and covered business method patent reviews (``CBM'') pursuant to the
provisions of the Leahy-Smith America Invents Act (``AIA'') providing
for trial proceedings before the Office. Specifically, the Office seeks
input on a proposed amendment process that would involve a preliminary
non-binding decision by the Board that provides information to the
parties regarding the merits of a motion to amend, and an opportunity
for a patent owner to revise its motion to amend thereafter. In
addition, the Office seeks input on a proposed pilot program
implementing the new amendment process. The Office also seeks input
regarding whether the Office should continue to allocate the burden of
persuasion regarding patentability of substitute claims as set forth in
a recent informative Board decision, as well as any suggestions the
public may have as to motion to amend practice before the Board
generally.
DATES: Comment Deadline Date: Written comments must be received on or
before December 14, 2018, to ensure consideration.
ADDRESSES: Comments should be sent by electronic mail message over the
internet addressed to: [email protected]. Comments may
also be submitted by postal mail addressed to: Mail Stop Patent Board,
Director of the United States Patent and Trademark Office, P.O. Box
1450, Alexandria, VA 22313-1450, marked to the attention of ``Acting
Deputy Chief Administrative Patent Judge Jacqueline Wright Bonilla or
Vice Chief Administrative Patent Judge Michael Tierney, PTAB Request
for Comments 2018.''
Although comments may be submitted by postal mail, the Office
prefers to receive comments by electronic mail message to more easily
share all comments with the public. The Office prefers the comments to
be submitted in plain text, but also accepts comments submitted in
portable document format or DOC format. Comments not submitted
electronically should be submitted on paper in a format that
facilitates convenient digital scanning into portable document format.
The comments will be available for public inspection at the Patent
Trial and Appeal Board, located in Madison East, Ninth Floor, 600
Dulany Street,
[[Page 54320]]
Alexandria, Virginia. Comments also will be available for viewing via
the Office's internet website, https://go.usa.gov/xXXFW. Because
comments will be made available for public inspection, information that
the submitter does not desire to be made public, such as address or
phone number, should not be included in the comments.
FOR FURTHER INFORMATION CONTACT: Jacqueline Wright Bonilla, Acting
Deputy Chief Administrative Patent Judge, or Michael Tierney, Vice
Chief Administrative Patent Judge, by telephone at (571) 272-9797.
SUPPLEMENTARY INFORMATION:
Summary
In this Request for Comments, the Office seeks feedback and
information regarding a new amendment process involving a preliminary
non-binding decision by the Board that provides information to the
parties regarding the merits of a motion to amend, and an opportunity
for a patent owner to revise its motion to amend thereafter. The Office
also seeks feedback and information regarding a proposed pilot program
implementing the new amendment process before the Board. The goal of
the proposed amendment process and pilot program is to provide an
improved amendment practice in AIA trials in a manner that is fair and
balanced for all parties and stakeholders. In essence, this is proposed
to be done by: 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 Office has received feedback from the public regarding the
Board's current motion to amend practice, including some concerns
regarding the grant rate of claim amendments in AIA trial proceedings.
As detailed further below, the Office has conducted a study of the
outcomes of motions to amend decided by the Board and compiled data on
reasons why motions to amend have been granted or denied. The Office
now seeks to explore what effect certain proposed changes to the
Board's procedures described below may have on amendment practice in
AIA trial proceedings, and to obtain the public's perspectives on the
potential impacts of such changes.
In particular, the Office wishes to explore whether, and under what
circumstances, a preliminary decision by the Board that evaluates a
motion to amend might prove helpful in an AIA trial amendment process.
In the Office's current proposal, the Board will provide a patent owner
an opportunity to file a motion to amend during the course of an AIA
trial, and an opportunity to revise that motion. By statute, the Board
may permit additional motions to amend ``as permitted by regulations
prescribed by the Director.'' 35 U.S.C. 316(d)(2). Under currently
prescribed regulations, the Board may authorize an additional motion to
amend when, for example, ``there is a good cause showing.'' 37 CFR
42.121(c) & 42.221(c).
In the current proposal, after the patent owner files an initial
motion to amend and the petitioner has an opportunity to respond, a
Board panel will provide a preliminary decision addressing the initial
motion to amend. The preliminary decision may provide information
relevant to whether the motion to amend meets statutory and regulatory
requirements, as well as whether the proposed substitute claims meet
the patentability requirements under the Patent Act in light of prior
art of record. To the extent it is necessary, the issuance of the
Board's preliminary decision addressing the initial motion to amend
will be deemed ``good cause'' for further amendment under 37 CFR
42.121(c) & 42.221(c).
Similar to a decision to institute, a preliminary decision on a
motion to amend will not be binding on the Board's final written
decision. Both parties will have an opportunity to respond to the
preliminary decision, and the patent owner will have an opportunity to
revise its motion to amend after receiving the preliminary decision.
Thereafter, if the Board determines the petitioner has shown that
corresponding original challenged claims are unpatentable or that the
original claims are otherwise cancelled, the Board will consider the
entirety of the record, including parties' arguments and cited evidence
relevant to the motion to amend, before reaching a final written
decision on the substitute claims proposed in the latest version of the
motion to amend filed by the patent owner.
In this Request for Comments, the Office also seeks input regarding
whether the Office 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), as well as any suggestions the public may have as to
motion to amend practice before the Board generally.
Background
To elicit specific input on the Board's motion to amend practice,
in June 2014, the Office published a Request for Comments in the
Federal Register that requested comments on the Board's practice
regarding motions to amend. See Request for Comments on Trial
Proceedings Under the America Invents Act Before the Patent Trial and
Appeal Board, 79 FR 36474 (June 27, 2014).
Comments from the public (including bar associations, corporations,
law firms, and individuals) regarding motions to amend ranged from
seeking no change to the Board's current practice, to proposals for the
grant of all motions to amend that meet 35 U.S.C. 316(d) statutory
requirements without a review of patentability. Most comments focused
on which party should bear the burden of proving the patentability or
unpatentability of substitute claims proposed in a motion to amend, or
on the scope of the prior art that must be discussed by a patent owner
in making a motion to amend. The feedback generally did not relate to
the timing of motions to amend or other aspects of Board procedure in
considering such motions. The comments are available on the USPTO
website: https://go.usa.gov/xXXF8.
In August 2015, the Office solicited further input from the public
on ``[w]hat modifications, if any, should be made to the Board's
practice regarding motions to amend.'' See Proposed Amendments to the
Rules of Practice for Trials Before the Patent Trial and Appeal Board
(``Proposed Amendments to the Rules''), 80 FR 50720, 50724-25 (Aug. 20,
2015). Once again, in relation to motions to amend, most comments
focused on which party should bear the burden of proof on the
patentability of substitute claims proposed in a motion to amend. The
comments are available on the USPTO website: https://go.usa.gov/x5SbK.
In addition, a few comments suggested using examiners to review the
patentability of proposed substitute claims. On balance, the Office
decided at that time not to implement changes to the Board's motion to
amend procedures through rulemaking, but reaffirmed its commitment to
continue to evaluate the best way to improve the Board's practice. See
Proposed Amendments to the Rules, 80 FR at 50724-25; Amendments to the
Rules of Practice for Trials Before the Patent Trial and Appeal Board,
81 FR 18750, 18755 (Apr. 1, 2016).
In an effort to better understand the Board's motion to amend
practice, the Board undertook in early 2016 a study to determine: (1)
The number of motions
[[Page 54321]]
to amend that had been filed in AIA trials, both as a cumulative total
and by fiscal year; (2) subsequent developments in each motion to amend
(i.e., whether the motion was decided, rendered moot, withdrawn, or
otherwise dismissed); (3) the number of motions to amend requesting to
substitute claims that were granted, granted-in-part and denied-in-
part, and denied; and (4) the reasons the Board provided for denying
entry of substitute claims. See Motion to Amend Study (April 30, 2016),
https://go.usa.gov/xXXyT; Data for 192 Completed Trials with a Motion
to Amend, https://go.usa.gov/xXXyZ (last visited Oct. 11, 2018). The
Board continues to collect data on motions to amend, and has published
on its website an update to the study through March 31, 2018. See
https://go.usa.gov/xUJgB (last visited Oct. 11, 2018).
Data obtained from the study show that patent owners filed motions
to amend in about 10% (305) of the 3203 completed AIA trials and in
about 8% (56) of the 725 pending AIA trials--a total of 361 motions to
amend through March 31, 2018. Although motions to amend are filed in
less than 10% of AIA trials (completed and pending), current data show
an increase in the number of motions to amend filed in fiscal year
2018, when compared to other fiscal years. The number of motions to
amend filed through the first half of fiscal year 2018 (54) exceeded
the number of motions to amend filed for the entire fiscal year 2017
(50), and is approximately equal to the number of motions to amend
filed for the entire fiscal year 2016 (56).
The data further show that the Board ruled on a motion to amend
requesting to substitute claims in 62% (189) of the 305 completed AIA
trials with amendment motions as of March 31, 2018. In the remaining
38% (116) of the 305 completed AIA trials, the motion to amend: (a)
Requested solely to cancel claims (20 or 7%); (b) was rendered moot
because the panel of judges found the original claims not unpatentable
or because the panel of judges already decided a motion to amend
proposing the same substitute claims (35 or 11%); or (c) was not
decided because the motion was withdrawn or the case terminated prior
to a final written decision (61 or 20%), respectively. Of the 189
motions to amend requesting to substitute claims that the Board
decided, the Board granted the motion to amend in 4% (7) of the trials,
granted-in-part and denied-in-part the motion to amend in 6% (11) of
the trials, and denied the motion to amend in 90% (171) of the trials.
The specific reasons the Board provided for denying or denying-in-part
the motions to amend are set forth in the table below.
Reasons for Denying or Denying-in-Part the Motions To Amend
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Percent
Reason(s) for denying Number of of total
motions ***
------------------------------------------------------------------------
Anticipated/obvious over art of record (102/103).. 74 41
Multiple statutory reasons *...................... 43 24
Non-statutory subject matter (101)................ 12 7
Lack of written description (112)................. 14 8
Lack of enablement (112).......................... 3 2
Indefiniteness (112).............................. 1 1
Claims enlarge scope of patent (316).............. 10 5
Unreasonable number of substitute claims (316) **. 3 2
Procedural reasons................................ 22 12
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Total Motions to Amend Denied or Denied-in-Part. 182 .........
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* All motions to amend but one that the Board denied for multiple
statutory reasons included 35 U.S.C. 102, 103, and/or 112 as a reason
for denial.
** See also 37 CFR 42.121(a)(3) (stating that the ``presumption is that
only one substitute claim would be needed to replace each challenged
claim, and it may be rebutted by a demonstration of need'').
*** The ``Percent of Total'' adds up to slightly more than 100% (i.e.,
102%) due to rounding of percent numbers for each individual row in
``Reason(s) for Denying.''
As noted above, in 182 AIA trials, the Board has denied or denied-
in-part a motion to amend. In 81% (147) of those trials, the Board's
final written decision identified at least one statutory ground of
patentability that the proposed substitute claims did not satisfy. See
Data for 305 Completed Trials with a Motion to Amend, https://go.usa.gov/xUJgk (last visited Oct. 11, 2018). Using conventional
patent prosecution as a comparison, the Board's decisions in those
cases are akin to an examiner rejecting a proposed amended claim
because it is anticipated, obvious, not adequately described in the
written description, indefinite, or directed to non-statutory subject
matter. In 7% (13) of the 182 AIA trials, the Board based a denial on a
failure by the patent owner to satisfy the statutory requirements of a
motion to amend under 35 U.S.C. 316(d)(1)(B) and (3) (requiring ``a
reasonable number of substitute claims'' and stating that an amendment
``may not enlarge the scope of the claims of the patent or introduce
new matter''). In the remaining 12% (22) of those trials, the Board
based a denial solely on procedural reasons, such as a failure to
provide a claim construction for limitations added in substitute
claims.
On October 4, 2017, the en banc United States Court of Appeals for
the Federal Circuit issued its decision in Aqua Products, Inc. v.
Matal, 872 F.3d 1290 (Fed. Cir. 2017) (en banc) (``Aqua Products''),
addressing the burden of persuasion regarding patentability of
substitute claims presented in a motion to amend. The lead opinion of
the decision concludes with the following:
The only legal conclusions that support and define the judgment
of the court are: (1) The PTO has not adopted a rule placing the
burden of persuasion with respect to the patentability of amended
claims on the patent owner that is entitled to deference; and (2) in
the absence of anything that might be entitled deference, the PTO
may not place that burden on the patentee.
Id. at 1327.
In view of the Federal Circuit's holding in Aqua Products, on
November 21, 2017, the Office issued formal guidance through a
memorandum from the Chief Administrative Patent Judge (``Guidance
Memo''). See Guidance on Motion to Amend in View of Aqua Products,
https://go.usa.gov/xQGAA (last visited Oct. 11, 2018). The Guidance
Memo explains that, in light of the Aqua Products decision, the Board
will no longer place the burden of persuasion on a patent owner with
respect to patentability of the proposed substitute claims presented in
a motion to amend. The Guidance Memo also notes that a motion to amend
must continue to satisfy the requirements of 37 CFR 42.121 or 42.221,
as applicable, that all parties still have a duty of candor under 37
CFR 42.11, and that the page-limits, type, and timing of briefs remain
unchanged. Id.
On December 22, 2017, the Federal Circuit issued a decision in
Bosch Automotive Service Solutions, LLC v. Matal, 878 F.3d 1027 (Fed.
Cir. 2017), as amended in part on reh'g (Mar. 15, 2018) (``Bosch''). In
that decision, the Federal Circuit explained, ``the petitioner bears
the burden of proving that the proposed amended claims are unpatentable
by a preponderance of the evidence.'' Id. at 1040. Because the
petitioner in Bosch had settled with the patent owner, the Federal
Circuit remanded the case to the Board to evaluate the patentability of
the amended claims, indicating that the Board must justify any finding
of unpatentability by reference to the evidence of record in the IPR.
Id. (``[W]here the challenger ceases to participate in the IPR and the
Board proceeds to final judgment, it is the Board that must justify any
finding of unpatentability by reference to the evidence of record in
the IPR.'') (quoting Aqua Products, 872 F.2d at 1311 (opinion of
O'Malley, J.)).
In view of decisions by the Federal Circuit regarding motion to
amend practice and procedure in AIA trials, as explained above, the
Board recently de-
[[Page 54322]]
designated as precedential MasterImage 3D, Inc. v. RealD Inc., Case
IPR2015-00040 (PTAB July 15, 2015) (Paper 42) and de-designated as
informative Idle Free Sys., Inc. v. Bergstrom, Inc., IPR 2012-00027
(PTAB June 11, 2013). Concurrently, the Board designated Western
Digital Corp. v. SPEX Techs., Inc., Case IPR2018-00082 (Paper 13) (PTAB
April 25, 2018) (``Western Digital order'') as informative to provide
current guidance on several aspects of the motion to amend practice.
With respect to the burden of persuasion, the Western Digital order
explains that under the current state of the law ``the burden of
persuasion will ordinarily lie with the petitioner to show that any
proposed substitute claims are unpatentable'' and that the ``Board
itself may justify any finding of unpatentability by reference to
evidence of record in the proceeding.'' Id. at 4.
In light of more than five years' worth of data obtained through
the above-mentioned Board study, recent Federal Circuit decisions, the
Guidance Memo, and the Western Digital order (informative), and in an
effort to continue to enhance the effectiveness and fairness of AIA
trial proceedings, the Office seeks further specific feedback regarding
changes to the Board's motion to amend practice and a motion to amend
pilot program.
Request for Public Comments
The Office seeks written public comments on an amendment procedure
in AIA trials that involves the Board issuing a preliminary non-binding
decision that provides information relevant to the merits of a motion
to amend, and provides a patent owner with an opportunity to revise its
motion to amend thereafter. A proposed timeline showing the parties'
filings and the preliminary decision envisioned under the current
proposal is set forth in Appendix A1 of this request. An overlay of
that timeline onto a timeline of an AIA trial considering only the
patentability of originally challenged claims is set forth in Appendix
A2. The Office plans to implement such a process as a pilot program, as
set forth below in greater detail. The Office also seeks comments as to
whether, in view of recent Federal Circuit case law, it should engage
in rulemaking to allocate the burden of persuasion when determining
patentability of substitute claims as set forth in the Western Digital
order. The Office welcomes any comments from the public on the topics
covered in this notice. The Office also poses specific questions below,
and invites public feedback on those questions.
Proposal: Preliminary Decision by the Board on a Motion To Amend and an
Opportunity To Revise That Motion
The Office seeks written public comments as to whether, and under
what circumstances, a preliminary non-binding decision by the Board
evaluating a motion to amend would be helpful in AIA trials. The
preliminary decision would initially assess whether a motion to amend
meets statutory and regulatory requirements, and/or the patentability
of proposed substitute claims, for example, in light of prior art of
record in the proceeding.
In the current proposal, after institution of an AIA trial, a
patent owner would have an opportunity to file a motion to amend, and
then revise that motion after receiving the petitioner's opposition and
the preliminary decision from the Board. Specifically, after a patent
owner files a motion to amend that proposes substitute claims, and a
petitioner files an opposition (if it so chooses), the Board would
present an initial evaluation of the parties' submissions in a
preliminary decision. The current proposed timing for a motion to
amend, the preliminary decision, a revision to the motion, and related
briefing is set forth in Appendix A1.
After receiving the preliminary decision, a patent owner may file a
revision to its motion to amend. The revision may include, for example,
changes to the initially proposed substitute claims to address issues
identified in the preliminary decision. The petitioner would have an
opportunity to file an opposition responding to the revised motion to
amend and the preliminary decision. Before the oral hearing, the patent
owner also may file a reply to an opposition to the revised motion to
amend, and the petitioner may file a corresponding sur-reply. During
the oral hearing itself, both parties may address points raised and
evidence discussed in the preliminary decision and as briefed by the
parties.
Although a preliminary decision would not be binding on the Board's
subsequent decisions or provide dispositive conclusions regarding
motion to amend requirements or the patentability of substitute claims,
it may provide information helpful to the parties, such as to a patent
owner as it determines whether and/or how to revise its motion to
amend, or to petitioner as it determines how to respond to a revised
motion to amend, or to both parties as they determine how to respond to
information discussed in the preliminary decision itself.
Preliminary Decision on a Motion to Amend: The Board would provide
a preliminary decision after the petitioner has an opportunity to file
an opposition to a patent owner's motion to amend. The preliminary
decision would provide information relating to whether the motion to
amend meets the statutory requirements of 35 U.S.C. 316(d) or 326(d)
and the regulatory requirements of 35 CFR 42.121 or 42.221, and
information relating to the patentability of the proposed substitute
claims. To meet statutory and regulatory requirements, a motion to
amend must, among other things: propose a reasonable number of
substitute claims; propose substitute claims that do not enlarge claim
scope or introduce new matter; respond to a ground of unpatentability
involved in the trial; and set forth written description support for
each substitute claim. See 35 U.S.C. 316(d) & 326(d); 37 CFR 42.121 &
42.221; see also Western Digital order, Case IPR2018-00082 (Paper 13)
(PTAB April 25, 2018).
Similar to an institution decision, a preliminary decision on a
motion to amend during an AIA trial would not be binding on the Board,
for example, when it renders a final written decision. In the current
proposal, the preliminary decision would indicate whether there is a
reasonable likelihood that: (1) The patent owner would prevail in
establishing that the motion to amend meets statutory and regulatory
requirements, and/or (2) the petitioner would prevail in establishing
the unpatentability of any proposed substitute claims.
Depending on the patent owner's response to the initial evaluation
in the preliminary decision, the case will proceed according to
Alternative 1 or Alternative 2 discussed below.
Alternative 1: Patent Owner Reply or Revised Motion to Amend and
Subsequent Briefing (patent owner has the first opportunity to respond
to the preliminary decision, as shown in Appendix A1): If the
preliminary decision indicates that the motion to amend fails to meet
any statutory or regulatory requirements, or that the petitioner
demonstrates a reasonable likelihood that it would prevail in
establishing the unpatentability of any proposed substitute claims in
view of the current record, the patent owner and petitioner may file
papers as discussed below.
Within a certain time frame after receiving the preliminary
decision, for example, within 1 month, a patent owner may file: (1) A
reply to the petitioner's opposition to the motion to amend and the
preliminary decision; or
[[Page 54323]]
(2) a revised motion to amend that revises the proposed new substitute
claims and provides new arguments and/or evidence as to why the revised
substitute claims meet statutory and regulatory requirements for a
motion to amend, as well as arguments and evidence (as patent owner
chooses to include) relevant to the patentability of the revised
substitute claims. A revised motion to amend must provide amendments,
arguments, and/or evidence in a manner that is responsive to issues
raised in the preliminary decision. A revised motion to amend may not
include amendments, arguments, and/or evidence that are unrelated to
issues raised in the preliminary decision or the petitioner's
opposition to the motion to amend. Generally, the Board will render a
final written decision only as to the latest-filed version of the
patent owner's motion to amend and substitute claims proposed therein.
As shown in Appendix A1, if the patent owner files a reply to the
petitioner's opposition to the motion to amend and the preliminary
decision, the petitioner may file a corresponding sur-reply. As also
shown in Appendix A1, if the patent owner chooses instead to revise its
motion to amend (file a ``revised MTA''), the petitioner may file an
opposition to that motion, the patent owner may file a reply to that
opposition, and the petitioner may file a sur-reply. Thus, if patent
owner files a reply, rather than a revised motion to amend, there will
be only two papers filed by the parties after the preliminary decision
(i.e., the patent owner reply and the petitioner sur-reply), rather
than all four shown in Appendices A1 and A2. An opposition or reply may
be accompanied by new evidence that responds to new evidence or issues
raised in the preliminary decision, or in the corresponding revised
motion to amend or opposition. A petitioner sur-reply may not be
accompanied by new evidence other than deposition transcripts of the
cross-examination of any reply witness. The sur-reply may only respond
to arguments made in reply briefs, comment on reply declaration
testimony, and/or point to cross-examination testimony.
Alternative 2: Petitioner Reply and Patent Owner Sur-Reply
(petitioner has the first opportunity to respond to the preliminary
decision): If the preliminary decision indicates that the motion to
amend meets the statutory and regulatory requirements, and that the
petitioner does not demonstrate a reasonable likelihood that it would
prevail in establishing the unpatentability of any proposed substitute
claims in view of the current record, the petitioner may file a reply
to the preliminary decision (e.g., within one month after the Board
provides its preliminary decision), and the patent owner may file a
sur-reply in response (e.g., within one month after the reply is
filed). In addition, if patent owner chooses not to file any paper,
i.e., a reply or a revised motion to amend, within a designated time
frame for such a paper (e.g., within one month) after the Board
provides a preliminary decision, the petitioner may file a reply to the
preliminary decision (e.g., within two weeks thereafter), and the
patent owner may file a sur-reply in response (e.g., within two weeks
after the reply is filed).
Specifically, if the preliminary decision indicates that the Board
is reasonably likely to deny the motion to amend in relation to at
least one substitute claim, Alternative 1 applies, as discussed above.
If the preliminary decision indicates that the Board is reasonably
likely to grant the motion to amend in relation to all substitute
claims proposed by the patent owner, however, Alternative 2 applies,
and petitioner may file the first paper (a reply) in response to the
preliminary decision. Similarly, if patent owner chooses not to file a
paper after the Board provides a preliminary decision, Alternative 2
applies, albeit potentially on an accelerated schedule.
If Alternative 2 applies, the petitioner reply may be accompanied
by new evidence that responds to new issues raised in the preliminary
decision, but the petitioner may not raise a new argument of
unpatentability that it did not raise in its opposition to the motion
to amend. The patent owner sur-reply may not be accompanied by new
evidence other than deposition transcripts of the cross-examination of
any reply witness. The sur-reply may only respond to arguments made in
reply briefs, comment on reply declaration testimony, and/or point to
cross-examination testimony.
Cross-Examination Through Depositions: In the current proposal, all
cross-examinations, i.e., depositions, of witnesses in relation to
direct testimony (provided in declarations) pertaining to a motion to
amend would occur after the Board issues the preliminary decision on a
motion to amend.
Petitioner Ceases to Participate in an AIA Trial and the Board
Proceeds to a Final Written Decision on a Motion to Amend: If the
petitioner ceases to participate altogether in an AIA trial in which
the patent owner files a motion to amend, and the Board nevertheless
proceeds with the trial thereafter, the Board may, in its discretion,
solicit patent examiner assistance in the absence of a petitioner
opposition to a motion to amend. That assistance, e.g., by an examiner
in the Central Reexamination Unit, could include the preparation of an
advisory report that initially assesses whether a motion to amend meets
certain statutory and regulatory requirements (i.e., whether the
amendment enlarges the scope of the claims of the patent or introduces
new matter), as well as the patentability of proposed substitute
claims, for example, in light of prior art that was provided by the
patent owner and/or obtained in prior art searches by the examiner.
An examiner advisory report would not include a final determination
on any ultimate legal conclusion. When preparing an advisory report,
the examiner would consider relevant papers of record, as well as
evidence cited therein, with certain exceptions. The examiner would
take into account affidavits or declarations by witnesses cited by
parties, but generally would not consider cross-examination testimony
of such witnesses, engage in witness credibility determinations, or
address admissibility of evidence. The examiner would conduct prior art
searches as appropriate, and take into account search results that are
relevant to the substitute claims when preparing an advisory report.
The examiner will not, however, search on or address the original
claims.
An examiner advisory report would not be binding, but may assist
the patent owner and the Board during an AIA trial proceeding. Similar
to inter partes reexamination, an examiner would not conduct interviews
or otherwise interact directly with the parties. Rather, as needed, the
patent owner may contact the Board with questions or request a
conference call with the panel. Depositions or other requests for
discovery or testimony regarding an examiner's decision-making process
would be denied pursuant to the Manual of Patent Examining Procedure
1701.
If the Board seeks examiner assistance prior to issuing a
preliminary decision, the patent owner may respond to the examiner
advisory report and the preliminary decision in a reply or a revised
motion to amend filed after the preliminary decision. If the Board
seeks examiner assistance after issuing a preliminary decision and
after the patent owner files a revised motion to amend, the patent
owner may respond to the preliminary decision and the examiner advisory
report in a reply. A patent owner reply or revised motion to
[[Page 54324]]
amend may be accompanied by new evidence that responds to new prior art
or issues raised in an examiner advisory report or discussed in the
preliminary decision.
Proposed Pilot Program
The Office is also seeking input on the use of a pilot program to
implement the proposed amendment process discussed above. As part of
the pilot program, the Board will issue a preliminary decision after
receiving a patent owner's motion to amend and any opposition by a
petitioner, and a patent owner would have an opportunity to file a
revised motion to amend, as described above. The currently proposed
briefing schedule for the pilot program is set forth in Appendix A1.
Conduct of Proposed Pilot Program: The Office anticipates that it
will implement the pilot program shortly after the comment deadline for
this Request for Comments ends on December 14, 2018. The Office plans
to issue a notice to the public providing any necessary additional
details of the pilot program shortly before implementation. Once the
pilot program begins, the Office likely will conduct it for at least
one year, and the program may be extended beyond that time. The Office
would provide notice of any extension prior to expiration of the pilot.
The Office may implement the pilot program so that the new
procedure is used in every AIA trial proceeding involving a motion to
amend where the Board issues a decision to institute a trial after the
implementation date of the pilot program. In AIA trial proceedings
where the Board has instituted a trial before the implementation date
of the program, the motion to amend process would proceed under
currently existing procedures. Once implemented as a pilot program, the
new amendment procedure would be the only option available for amending
claims in AIA proceedings. That is to say, the current amendment
process would no longer be available as an option. The program is a
``pilot'' in the sense that the Office may modify the amendment
procedures in response to feedback and experience with the program,
during the course of the pilot. The Office requests feedback and
comment in this regard, and also as to whether it should consider not
proceeding with the program in AIA trials where both parties agree to
opt-out of the program.
The Office would then consider the results of this pilot program in
determining how to refine this approach going forward.
Potential Rulemaking To Allocate the Burden of Persuasion as Set Forth
in the Western Digital Order
The Office also requests comments from the public regarding whether
it should engage in rulemaking to allocate the burden of persuasion as
suggested by the Aqua Products en banc court, and if so, whether the
Office should allocate that burden as set forth in the Western Digital
order. Specifically, the Western Digital order provides that ``the
burden of persuasion will ordinarily lie with the petitioner to show
that any proposed substitute claims are unpatentable'' and that the
``Board itself also may justify any finding of unpatentability by
reference to evidence of record in the proceeding.'' Western Digital
order 4. ``Thus, the Board determines whether substitute claims are
unpatentable by a preponderance of the evidence based on the entirety
of the record, including any opposition made by the petitioner.'' Id.
The Office seeks public comment on the circumstances in which the
Board itself may justify findings of unpatentability, for example: When
the petitioner has ceased to participate in the proceeding; when the
petitioner remains in the proceeding but chooses not to oppose the
motion to amend or a subset of proposed substitute claims in the motion
to amend; or when the petitioner opposes the motion to amend but fails
to take into account all aspects of the record before the Board. The
Office does not envision, however, that allowing the Board to justify
any findings of unpatentability would limit a petitioner's ability to
submit its own arguments or evidence regarding unpatentability, or
prevent the Board from adopting a petitioner's arguments in deciding
the motion to amend. Moreover, the Board is not required to make any
determinations of unpatentability in situations where the petitioner,
for any reason, has not established that proposed substitute claims are
unpatentable by a preponderance of the evidence. In other words, the
Board is permitted, but not required, to find claims unpatentable for
reasons other than those advanced by the petitioner as long as the
patent owner has notice and an opportunity to be heard.
In addition, the Office seeks public comment on how, if at all,
adoption of the proposed motion to amend process would affect the
allocation of the burden of persuasion as set forth in the Western
Digital order.
Questions Regarding the Proposed Amendment Process and Pilot Program
The Office welcomes any comments from the public on the proposed
amendment process and pilot program, and would be particularly
interested in the public's input on the questions and requested
information noted below.
1. Should the Office modify its current practice to implement the
proposal summarized above and presented in part in Appendix A1? Why or
why not?
2. Please provide comments on any aspect of the proposed amendment
process, including, but not limited to, the content of the papers
provided by the parties and the Office and the timing of those papers
during an AIA trial.
3. How does the timeline in Appendix A1 impact the parties'
abilities to present their respective cases? If changes to the timeline
are warranted, what specific changes are needed and why?
4. If the Office implements this proposal, should the Board prepare
a preliminary decision in every proceeding where a patent owner files a
motion to amend that proposes substitute claims?
5. What information should a preliminary decision include to
provide the most assistance to the parties in presenting their case?
For example, is there certain information that may be particularly
useful as the parties consider arguments and evidence to present in
their papers, how issues may be narrowed for presentation to the Board,
and/or whether to discuss a settlement?
6. If the Office implements this proposal, should there be any
limits on the substance of the claims that may be proposed in the
revised motion to amend? For example, should patent owners be permitted
only to add limitations to, or otherwise narrow the scope of, the
claims proposed in the originally-filed motion to amend?
7. What is the most effective way for parties and the Office to use
declaration testimony during the procedure discussed above? For
example, how and when should parties rely on declaration testimony?
When should cross-examination of declaration witnesses take place, if
at all, in the process? At what stage of briefing should a party be
able to rely on cross-examination (deposition transcripts) testimony of
a witness?
8. If a petitioner ceases to participate in an AIA trial and the
Board solicits patent examiner assistance regarding a motion to amend,
how should the Board weigh an examiner advisory report
[[Page 54325]]
relative to arguments and evidence provided by a patent owner? What
type of assistance or information should a patent examiner provide?
Should prior art searches by examiners be limited to those relevant to
new limitations added to proposed substitute claims and reasons to
combine related to such limitations?
9. Should the Board solicit patent examiner assistance in other
circumstances, and if so, what circumstances? For example, should the
Board solicit patent examiner assistance when the petitioner remains in
the AIA trial but chooses not to oppose the motion to amend?
10. Should a motion to amend filed under the proposed new process
be contingent or non-contingent? For purposes of this question,
``contingent'' means that the Board will provide a final decision on
the patentability of a proposed substitute claim only if it determines
that a corresponding original claim is unpatentable (as in the current
proposal); and ``non-contingent'' means that the Board will provide a
final decision on the patentability of substitute claims in place of
determining the patentability of corresponding original claims.
11. If the Office implements the proposal in which the Board issues
a preliminary decision on a motion to amend, as discussed above, should
any additional changes be made to the current default trial schedule to
accommodate the new practice?
12. What impact would implementing the proposals above have on
small or micro entities who participate as parties in AIA trial
proceedings?
13. Should the Office consider additional options for changing the
timing and/or the Board's procedures for handling motions to amend that
are not covered by the proposals above? If so, please provide
additional options or proposals for the Office to consider, and discuss
the advantages or disadvantages of implementation.
14. Should the Office consider not proceeding with the pilot
program in AIA trials where both parties agree to opt-out of the
program?
Questions Regarding Potential Rulemaking To Allocate Burden of
Persuasion as Set Forth in the Western Digital Order
15. Should the Office engage in rulemaking to allocate the burden
of persuasion regarding the patentability of proposed substitute claims
in a motion to amend as set forth in the Western Digital order? What
are the advantages or disadvantages of doing so?
16. If the Office continues to allocate the burden as set forth in
the Western Digital order, under what circumstances should the Board
itself be able to justify findings of unpatentability? Only if the
petitioner withdraws from the proceeding? Or are there situations where
the Board itself should be able to justify findings of unpatentability
when the petitioner remains in the proceeding? What are the advantages
or disadvantages?
17. If the Office adopts the current proposal including a
preliminary decision by the Board on a motion to amend, do the answers
to questions 15 and 16 change?
Dated: October 19, 2018.
Andrei Iancu,
Under Secretary of Commerce for Intellectual Property, Director of the
United States Patent and Trademark Office.
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Appendix A1
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Appendix A2
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[FR Doc. 2018-23187 Filed 10-26-18; 8:45 am]
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