By: Nathanael Luman, Ph.D. and Kerry Taylor, Ph.D.

The PTAB extended the deadline for issuing its IPR final written decision on a motion to amend by up to six months to provide additional time to consider the impact of the Federal Circuit’s recent en banc Aqua Products opinion in Minerva Surgical, Inc. v. Hologic, Inc., IPR2016-00868, Papers 56 & 57 (P.T.A.B. Oct. 5, 2017).

On April 11, 2016, Minerva filed a petition challenging all claims of a Hologic patent. On October 6, 2016, the PTAB instituted trial on all challenged claims. On January 11, 2017, Hologic filed a contingent motion to amend several claims.

The one-year statutory deadline for issuing the final written decision in this proceeding was set to expire on October 6, 2017. This deadline can be extended up to 6 months for good cause. See 35 U.S.C. § 316(a)(11) (“the 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”).

Two days before the one-year deadline was set to expire, the Federal Circuit issued its en banc decision in Aqua Products holding that the Board has improperly placed the burden of persuasion for motions to amend on the patent owner. See Aqua Products, Inc. v. Matal, No. 2015-1177 (Fed. Cir. Oct. 4, 2017).

In this IPR, the Chief Judge of the PTAB determined that good cause exists to extend the one-year period by up to six months for issuing the final written decision to consider the impact of Aqua Products on Hologic’s contingent motion to amend.

This proceeding will be closely watched to see if the PTAB will rule on Hologic’s contingent motion to amend and, if the PTAB does rule on the motion, how the PTAB implements the Federal Circuit’s holding in Aqua Products.