Aqua Products Decision Deemed “Good Cause”

Earlier this month the Patent Trial & Appeal Board (PTAB) determined, for the first time, that good cause existed to extend a trial beyond the mandated 12 months of 35 U.S.C. § 316(a)(11). While the Board has had trials extend beyond 12 months in cases of joinder — an existing exception to its 12 month mandate — this is the first time that the USPTO Director exercised his discretion to extend a trial schedule for “good cause.”As a reminder 316(a)(11) provides that:

[T]he final determination in an inter partes review [shall] be issued not later than 1 year after the date on which the Director notices the institution of a review under this chapter, except that the Director may, for good cause shown, extend the 1-year period by not more than 6 months. . . .

The Director has delegated the authority to extend the one-year period to the Chief Administrative Patent Judge. See 37 C.F.R. § 42.100(c). In particular, 37 C.F.R. § 42.100(c) provides:

An inter partes review proceeding shall be administered such that pendency before the Board after institution is normally no more than one year. The time can be extended by up to six months for good cause by the Chief Administrative Judge. . . .

In IPR2016-00868 Minerva Surgical, Inc., v. Hologic Inc. (Director Grant here; Trial Order here) the Board determined that because a contingent motion to amend remained pending, and In re Aqua Products issued just two days prior to the statutory deadline, that a discretionary extension was in order.

The Board explained:

Because of the potential impact of Aqua Products and limited amount of time for the Board and parties to analyze the guidance in Aqua Products and apply it to this proceeding, the Chief Judge has determined that good cause exists to extend the one-year period for issuing a final written decision.

Given the extension, it may be that the amendment of record was deemed unpatentable under the old standard (as is usually the case). If this were not the case, the PTAB might have proceeded, pointing out that the incorrect assignment of burden was harmless given the positive outcome. As I have explained previously, the shifting of burdens is unlikely to move the needle on amendment success given the minimalistic amendments. Nevertheless, cases including previously briefed motions to amend should receive additional briefing upon request of the parties.

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