Agency Still Responding to Criticism on Amendment Difficulty

A constant criticism of the Patent Trial & Appeal Board (PTAB) has been the perceived difficulty in amending claims in an AIA trial proceeding. In response, the PTAB has pointed out that the vast majority of motions to amendment fail to distinguish over the art of record. That is, the Board is not applying Draconian procedural requirements. Rather, in my experience, Patent Owners are attempting to skirt an intervening rights defense with a cosmetic change, or seeking to maintain their infringement case with an incremental change in claim scope. Such amendments routinely fail to clear the art of record (or supplemental art that is easily located). Not appreciating the real-life practicalities of amendment practice, many critics hoped that the shift in burden post Aqua Products would now favor amendments. While there has been a slight uptick for 2018, as expected, Aqua Products is not moving the needle.

Recent stats from the PTAB demonstrate that while amendment is being attempted slightly more often post-Aqua, the outcomes are no more favorable to Patent Owners.

Updating its earlier amendment study, the PTAB provided the following highlights last week:

Of the 3,203 trials that have gone to completion or settled, patent owners sought to amend the claims in 305 trials.
Of the 305 trials with motions to amend, the PTAB ultimately decided the merits of the motions in 189 trials. In the remaining 116 completed trials, the motions to amend were rendered moot because the PTAB did not find the original claims unpatentable, were not decided because the trial terminated prior to a final written decision, or were an amendment that only sought to cancel claims.
Of the 189 motions to amend that the PTAB decided, the PTAB granted or granted-in-part 18 motions. For 160 of the 182 motions denied or denied-in-part, the PTAB determined that that proposed amended claims did not satisfy at least one statutory requirement of patentability—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—or found that the patent owner failed to satisfy the statutory requirements for a motion to amend under 35 U.S.C. § 316(d). For the remaining 22 motions, the PTAB denied on procedural grounds related to the regulatory requirements for a motion to amend.
As of the midpoint of FY 2018, patent owners had filed more motions to amend than in recent fiscal years.

So, if this were patent prosecution, of the 189 amendments that were reviewed, 182 would have resulted in a new office action, and 7 amendments a Notice of Allowance. As noted above, this is a result of the slight changes submitted, and also the fact that the petitioner typically has more resources than the average patent examiner. There is no PTAB practice change that will reach such real-world dynamics, or make amendment more appealing to the other 90% of Patent Owners in AIA trials.

To the extent the Board can do anything to encourage amendment, it would be to allow for new claims in addition to “substitutes.” Patent Owners are far more likely to pursue new claims (as was the case in patent reexamination) as compared to wholesale replacements. Aside from that type of “something for nothing” change, the Board is spending a lot of time and effort exploring changes to the PTAB amendment process to appease critics. While commendable, this effort is better redirected to a mechanism that is not hopelessly hamstrung by present litigation realities.

Scott A. McKeown is an author of the Patents Post Grant.