[co-author: Kristen VandeVoort]*

On October 18, 2024, the USPTO’s final rule regarding Motion to Amend (“MTA”) practice and procedures in trial proceedings under the America Invents Act became effective. The rule makes permanent several MTA pilot program provisions, such as the PTAB providing preliminary guidance, revised MTA practice, examination assistance, and burdens of persuasion in MTAs. We previously discussed the Notice of Proposed Rulemaking (“NPR”) that lead to the final rule here.

Preliminary Guidance and Revised Motions to Amend

The final rule makes permanent the pilot program procedures that provide patent owners with two additional options when responding to disputed claims in trial proceedings:

1. Preliminary Guidance. Patent owners can request preliminary guidance to obtain the PTAB’s initial views on their MTA. This non-binding preliminary guidance informs the patent owner whether there is a reasonable likelihood its original MTA meets regulatory and statutory requirements, as well as the likelihood the petitioner, or any other opposition to the MTA, has established a reasonable likelihood the proposed claims are unpatentable.
   In response to preliminary guidance, a patent owner may file a reply or a revised MTA. If a patent owner does not file a reply or revised MTA after receiving preliminary guidance, the petitioner can file a reply, but the petitioner may only use evidence already on the record. If the petitioner does file a reply in this scenario, the patent owner may file a sur-reply. The patent owner’s sur-reply is limited to responding to petitioner’s reply and may not contain new evidence.
2. Revised Motion to Amend. Patent owners are entitled to file one revised MTA without PTAB permission after receiving an opposition to its original MTA or after receiving the PTAB’s preliminary guidance. The revised MTA must be responsive to the issues raised in the opposition or the preliminary guidance and must include one or more new proposed substitute claims in place of previously presented substitute claims.

Written Description Support and Burden of Persuasion

Under amended 37 C.F.R. § 42.121(b), written description support for a proposed substitute claim must be set forth in an MTA, rather than in the claim listing. The USPTO noted that this amendment is consistent with Lectrosonics, Inc. v. Zaxcom, Inc., IPR2018-01129, 2019 WL 1118864, at *2 (P.T.A.B. Feb. 25, 2019) (precedential). Moreover, the final rule places the burden of persuasion on patent owners to show by a preponderance of the evidence that their MTAs comply with the pertinent statutory and regulatory requirements. Petitioners also must meet the same evidentiary burden to show that any proposed substitute claims are unpatentable.

Board Discretion to Raise Grounds of Unpatentability

The USPTO confirmed in the rule notice that prior rules and Federal Circuit case law dictate that the PTAB retain discretion to sua sponte raise grounds of unpatentability related to substitute claims. The final rule thus broadens the Board’s authority with respect to raising grounds of unpatentability, such as expanding the body of evidence the Board may consider and make record of, to comply with the Federal Circuit’s Nike, Inc. v. Adidas AG, 955 F.3d 45 (2020) and Hunting Titan Inc., v. DynaEnergetics Europe GmbH, 28 F.4th 1371 (Fed. Cir. 2022) decisions. Accordingly, Hunting Titan, Inc. v. Dynaenergetics Gmbh & Co. Kg, No. IPR2018-00600, 2019 WL 5849607, Paper 67 (P.T.A.B. July 6, 2020) was de-designated from precedential status.

Examination Assistance

The PTAB has discretion to request examination assistance any time after a patent owner files an MTA if no petitioner opposes the MTA or if the PTAB determines that an opposition’s prior art challenge was deficient such that an additional prior art search is warranted. The final rule clarifies that a lack of opposition is sufficient for the PTAB to seek examination assistance, rather than adopting suggestions made during the comment period to rely on the adversarial nature of the proceedings themselves.

Takeaways:

MTA Pilot Program Practices related to preliminary guidance and revising an MTA are now final. The final rule clarifies the process to obtain preliminary guidance and how burdens of persuasion are allocated in MTA proceedings. Moreover, the final MTA rules emphasize the PTAB’s independent role in ensuring the integrity of the U.S. patent system.

*Member of the New Lawyers Group in Jones Day’s San Diego Office.