[Federal Register Volume 88, Number 99 (Tuesday, May 23, 2023)]
[Proposed Rules]
[Pages 33063-33066]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2023-10565]
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DEPARTMENT OF COMMERCE
Patent and Trademark Office
37 CFR Part 42
[Docket No.: PTO-P-2023-0024]
Request for Comments Regarding the Motion To Amend Pilot Program
and Rules of Practice To Allocate the Burdens of Persuasion on Motions
To Amend in Trial Proceedings Before the Patent Trial and Appeal Board
AGENCY: United States Patent and Trademark Office, Commerce.
ACTION: Request for comments.
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SUMMARY: The United States Patent and Trademark Office (USPTO or
Office) currently implements a pilot program for motion to amend (MTA)
practice and procedures in trial proceedings under the America Invents
Act (AIA) before the Patent Trial and Appeal Board (PTAB or Board). The
USPTO seeks public comments on whether the MTA Pilot Program's
procedures should be
[[Page 33064]]
made permanent, and if so, whether any modifications would be
beneficial. Additionally, the USPTO previously issued rulemaking
covering the allocation of the burdens of persuasion in MTA
proceedings. The USPTO seeks public input on the practical effects of
the rules on the parties and AIA proceedings, and whether modifications
to the rules, or additional guidance on implementing the rules, would
be beneficial. Lastly, the USPTO seeks input on whether the Board
should have broader authority to raise sua sponte grounds in the MTA
process.
DATES: Comment Deadline Date: To ensure consideration, commenters must
submit written comments on or before July 24, 2023.
ADDRESSES: For reasons of government efficiency, comments must be
submitted through the Federal eRulemaking Portal at
www.regulations.gov. To submit comments via the portal, enter docket
number PTO-P-2023-0024 on the homepage and click ``Search.'' The site
will provide a search results page listing all documents associated
with this docket. Find a reference to this proposed rulemaking and
click on the ``Comment'' icon, complete the required fields, and enter
or attach your comments. Attachments to electronic comments will be
accepted in ADOBE[supreg] portable document format (PDF) or MICROSOFT
WORD[supreg] format. Because comments will be made available for public
inspection, information that the submitter does not desire to make
public, such as an address or phone number, should not be included in
the comments.
Visit the Federal eRulemaking Portal (www.regulations.gov) for
additional instructions on providing comments via the portal. If
electronic submission of comments is not feasible due to a lack of
access to a computer and/or the internet, please contact the USPTO
using the contact information below for special instructions regarding
how to submit comments by mail or by hand delivery, based on the
public's ability to obtain access to USPTO facilities at the time.
FOR FURTHER INFORMATION CONTACT: Miriam L. Quinn, Acting Senior Lead
Administrative Patent Judge; or Melissa Haapala, Vice Chief
Administrative Patent Judge; at 571-272-9797 ([email protected] or
[email protected], respectively).
SUPPLEMENTARY INFORMATION:
Background
Motion To Amend Pilot Program
In 2019, the Office implemented an MTA Pilot Program based on
public feedback. See Notice Regarding a New Pilot Program Concerning
Motion To Amend Practice and Procedures in Trial Proceedings Under the
America Invents Act Before the Patent Trial and Appeal Board, 84 FR
9497 (March 15, 2019) (MTA Pilot Program notice). The MTA Pilot Program
provides a patent owner with two options if it chooses to file an MTA
in an AIA trial. The MTA Pilot Program notice (see 84 FR 9497-9507)
presents information regarding these two options, timelines of due
dates, and other details, including replies to comments received in
response to a prior request for comments published on October 29, 2018
(see 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 (83 FR 54319)) (seeking public comments on a
previously proposed procedure for MTAs, the Board's MTA practice
generally, and the allocation of burdens of persuasion after Aqua
Products, Inc. v. Matal, 872 F.3d 1290 (Fed. Cir. 2017) (en banc) (Aqua
Products)) (2018 RFC).
Under the current program, as discussed in the MTA Pilot Program
notice, a patent owner may choose to request preliminary guidance from
the Board concerning the originally filed MTA. This non-binding
preliminary guidance, typically in the form of a short paper, provides
feedback about whether there is a reasonable likelihood that the MTA
meets statutory and regulatory requirements for an MTA. MTA Pilot
Program notice at 9497, 9499. The preliminary guidance also provides
feedback on whether the petitioner (or the record then before the
Office, including any opposition to the MTA and accompanying evidence)
establishes a reasonable likelihood that any of the substitute claims
are unpatentable based on the preliminary record. Id. at 9497. The
preliminary guidance focuses on the limitations added in the MTA and
does not address the patentability of the originally challenged claims.
Id.
The patent owner may additionally or alternatively choose to file a
revised MTA after receiving the petitioner's opposition to the original
MTA and/or after receiving the Board's preliminary guidance (if
requested). Id. at 9498. A revised MTA includes one or more new
proposed substitute claims in place of previously presented substitute
claims and also may provide new arguments and/or evidence, but only in
a manner that is responsive to issues raised in the preliminary
guidance and/or the petitioner's opposition to the MTA. Id.
A patent owner can avail itself of either, both, or neither of
these two options. If the patent owner chooses neither of the two
options, the patent owner can pursue an MTA in practically the same way
as before the pilot program began. Id. at 9498.
The MTA Pilot Program is designed to provide a standardized
framework of MTA procedures and timelines for actions that would
reasonably fit within the one-year statutory period from institution to
a final written decision. See, e.g., id. at 9506-07 (providing
Appendices 1A (PO Reply Timeline) and 1B (Revised MTA Timeline)).
Shortly after the Office implemented the MTA Pilot Program, it
issued a Notice Regarding Options for Amendments by Patent Owner
Through Reissue or Reexamination During a Pending AIA Trial Proceeding
(April 2019), 84 FR 16654 (April 22, 2019) (reissue and reexamination
notice). The Office issued this notice in response to comments and
questions from stakeholders requesting clarification regarding existing
reissue and reexamination procedures at the Office available while an
AIA trial proceeding, including any appeal to the U.S. Court of Appeals
for the Federal Circuit, involving the patent is pending. Id. at 16654-
55. The reissue and reexamination notice provides a summary of various
pertinent practices regarding existing Office procedures that apply to
reissue and reexamination, including after a petitioner files an AIA
petition challenging claims of the same patent, after the Board
institutes a trial, and after the Board issues a final written decision
in an AIA trial proceeding. Id. at 16655-58. The notice also provides
summary information about factors the Office currently considers when
determining whether to stay or suspend a reissue proceeding, or stay a
reexamination, that involves a patent involved in an AIA proceeding,
and also when and whether to lift such a stay or suspension. Id. at
16656-58.
In determining whether the MTA Pilot Program should be made
permanent in its current form, modified in some manner, or replaced,
the Office seeks the benefit of the public's experience with the
program.
Rules of Practice To Allocate the Burdens of Persuasion on Motions To
Amend
In light of Aqua Products, as well as public comments in response
to the 2018 RFC and a relevant notice of
[[Page 33065]]
proposed rulemaking dated October 22, 2019 (see Rules of Practice To
Allocate the Burden of Persuasion on Motions To Amend in Trial
Proceedings Before the Patent Trial and Appeal Board (84 FR 56401)), in
2020 the Office revised the rules of practice in AIA trials to allocate
the burdens of persuasion for MTAs with respect to the patentability of
proposed substitute claims. 37 CFR 42.121(d), 42.221(d); see Rules of
Practice to Allocate the Burden of Persuasion on Motions to Amend in
Trial Proceedings Before the Patent Trial and Appeal Board, 85 FR 82923
(December 21, 2020) (MTA burden-allocation rules package). The rules
assign the burden of persuasion to the patent owner to show, by a
preponderance of the evidence, that an MTA complies with certain
statutory and regulatory requirements. 37 CFR 42.121(d)(1),
42.221(d)(1). The rules also assign the burden of persuasion to the
petitioner to show, by a preponderance of the evidence, that any
proposed substitute claims are unpatentable. 37 CFR 42.121(d)(2),
42.221(d)(2). Finally, the rules further specify that irrespective of
those burdens, the Board may, in the interests of justice, exercise its
discretion to grant or deny an MTA, but ``only for reasons supported by
readily identifiable and persuasive evidence of record.'' 37 CFR
42.121(d)(3), 42.221(d)(3); Hunting Titan, Inc. v. DynaEnergetics
Europe GmbH, IPR2018-00600 (PTAB July 6, 2020) (Paper 67) (Hunting
Titan). 85 FR at 82924, 82926-27. The MTA burden-allocation rules
package explained that the Office expects the Board will exercise its
discretion only in ``rare circumstances.'' 85 FR at 82928. Such
situations may include, for example, those in which ``the petitioner
has ceased to participate in the proceeding or chooses not to oppose
the motion to amend, or those in which 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 FR at
82924, 82927 (citing Hunting Titan, Paper 67 at 12-13, 25-26). In
instances in which the Board exercises its discretion in the interests
of justice, the Board will provide the parties with an opportunity to
respond before rendering a final decision on the MTA. Id. at 82927; see
also 37 CFR 42.121(d)(3), 42.221(d)(3) (``Where the Board exercises its
discretion under this paragraph, the parties will have an opportunity
to respond.'').
As noted in the MTA burden-allocation rules package, ``[i]n the
vast majority of cases, the Board will consider only evidence a party
introduces into the record of the proceeding.'' Id. Thus, ``[i]n most
instances, in cases where the petitioner has participated fully and
opposed the motion to amend, the Office expects that there will be no
need for the Board to independently justify a determination of
unpatentability.'' Id. at 82927-28. That said, the Board may consider,
for example, ``readily identifiable and persuasive evidence already
before the Office in a related proceeding (i.e., in the prosecution
history of the challenged patent or a related patent or application, or
in the record of another proceeding before the Office challenging the
same patent or a related patent).'' Id. at 82927. Likewise, ``the Board
may consider evidence that a district court can judicially notice under
Federal Rule of Evidence 201.'' Id.; see also 37 CFR 42.121(d)(3),
42.221(d)(3) (``[T]he Board may make of record only readily
identifiable and persuasive evidence in a related proceeding before the
Office or evidence that a district court can judicially notice.'').
Subsequent to the issuance of the burden-allocation rules, the
United States Court of Appeals for the Federal Circuit issued a
precedential decision in Hunting Titan, Inc., v. DynaEnergetics Europe
GmbH, 28 F.4th 1371 (Fed. Cir. 2022). The court stated that no court
precedent has ``established that the Board maintains an affirmative
duty, without limitation or exception, to sua sponte raise
patentability challenges to a proposed substitute claim.'' Id. at 1381
(citations omitted). The court also stated that ``confining the
circumstances in which the Board should sua sponte raise patentability
issues was not itself erroneous.'' Id. The court, however, found it
``problematic'' that the USPTO confined the Board's discretion to only
rare circumstances. Id. It also noted that the USPTO's ``substantial
reliance on the adversarial system . . . overlooks the basic purpose of
[inter partes review] proceedings: to reexamine an earlier agency
decision and ensure `that patent monopolies are kept within their
legitimate scope.''' Id. (citations omitted); see id. at 1385
(concurrence expressing concern that the burden-allocation rule's
requirement for ``readily identifiable and persuasive evidence'' may
prevent the Board from raising grounds ``even when no one is around to
oppose a new patent monopoly grant'').
The court also clarified that it was ``not decid[ing] whether the
Board has an independent obligation to determine patentability of
proposed substitute claims.'' Id. at 1382. Under the rules as currently
written, the Board retains discretion to raise, or to not raise,
grounds of unpatentability.
In light of the court's commentary on both the revised rules and
the Board's Hunting Titan decision, and the Office's desire to support
the integrity of the patent system and to issue robust and reliable
patent rights, the Office seeks public comments on whether the Board
should have broader authority to raise sua sponte grounds in the MTA
process. Additionally, the Office seeks public comments on whether, and
under what circumstances, the Office should solicit patent examiner
assistance regarding an MTA or conduct a prior art search in relation
to proposed substitute claims.
Furthermore, if the Board exercises its discretion and raises its
own grounds of unpatentability under 37 CFR 42.121(d)(3), the burden-
allocation rule does not specifically state where the burden of
persuasion lies for Board-raised grounds. One interpretation of current
Board authority would be that, because this scenario is outside of the
adversarial process, neither party bears the burden of persuasion. The
Office seeks public comments on whether the burden-allocation rule
should be revised to clarify who bears the burden of persuasion for
grounds of unpatentability raised by the Board under 37 CFR
42.121(d)(3) or 42.221(d)(3); see also Nike, Inc. v. Adidas AG, No.
2021-1903, 2022 WL 4002668, at *4-10 (Fed. Cir. Sept. 1, 2022) (finding
``it unnecessary to determine here whether, in an inter partes review,
the petitioner or Board bears the burden of persuasion for an
unpatentability ground raised sua sponte by the Board against proposed
substitute claims,'' after determining the outcome in the case would be
the same regardless).
Questions Regarding the Pilot Program and Burdens of Persuasion in
Motions To Amend
The Office welcomes any comments from the public on the pilot
program and burdens of persuasion for MTAs, and in particular, requests
feedback on the following questions:
(1) Has the MTA Pilot Program positively or negatively impacted a
patent owner's ability to successfully amend claims in an AIA
proceeding? Has it made it more likely that a patent owner will avail
itself of the MTA process?
(2) Are there circumstances in which reexamination and/or reissue
proceedings are better options for patent owners seeking to amend
claims
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challenged in an AIA proceeding, as compared to the MTA Pilot Program?
Is there anything more the Office can do to make the MTA process more
useful to patent owners?
(3) Should the Office modify any aspect of the MTA Pilot Program?
Should the Office continue to provide the options of receiving
preliminary guidance and being able to revise an MTA, as currently
implemented?
(4) Assuming the MTA Pilot Program should remain, should any aspect
of preliminary guidance, as currently provided by the Board, be
changed?
(5) What barriers, if any, exist that the Office can address to
increase the effectiveness of the MTA procedure?
(6) Should the Office modify its practice of when the Board can or
should raise a new ground of unpatentability, and if so, how? For
example, should the PTAB's decision in the Hunting Titan case continue
to guide when and how the Board can and should raise a new ground of
unpatentability? If so, why and how?
(7) Should the Office involve patent examiner assistance in
relation to MTAs? Should the Office conduct a prior art search in
relation to proposed substitute claims in certain situations? If so,
under what circumstances? And should examiner assistance or prior art
searches be limited in any way?
(8) Should the Office clarify in its rules where the burden of
persuasion for Board-raised grounds lies? Who should bear that burden?
(9) Should any other aspects of the MTA rules (37 CFR 42.121,
42.221), including as they relate to the Board's discretion to grant or
deny an MTA, be changed, and if so, how?
Katherine K. Vidal,
Under Secretary of Commerce for Intellectual Property and Director of
the United States Patent and Trademark Office.
[FR Doc. 2023-10565 Filed 5-22-23; 8:45 am]
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