Burden of Persuasion to Demonstrate Unpatentability on Petitioner

The United States Patent and Trademark Office (USPTO) has issued a Notice of Proposed Rulemaking (NPRM) to allocate the burdens of persuasion on motions to amend in AIA trial proceedings before the Patent Trial and Appeal Board (PTAB). The NPRM proposes that a petitioner bears the burden to show the unpatentability of substitute claims proposed in a motion to amend; a patent owner bears the burden to show that a motion to amend complies with certain statutory and regulatory requirements; and the Board may, in the interests of justice, make a determination regarding the patentability of substitute claims based on the record in the proceeding regardless of the burdens assigned to any party.

The NPRM basically follows the en banc decision in Aqua Prods., Inc. v. Matal, 872 f . 3d 1290 (Fed. Cir. 2017), in which a majority of the judges concluded that the Office had not adopted a rule allocating the burden of persuasion with respect to the patentability of proposed substitute claims. In light of Aqua Products, as well as public comment provided in response to a Request for Comments, the Office proposes to issue specific rules applicable to motions to amend.

The proposed rules (here) assign the burden of persuasion in relation to the patentability of proposed substitute claims to the petitioner, but permit the Board to exercise its discretion to reach a determination regarding patentability of proposed substitute claims even when a petitioner does not carry its burden of persuasion, when supported by the record and when in the interests of justice. The proposed rules also assign the burden of persuasion in relation to certain statutory and regulatory requirements for a motion to amend (i.e., 35 U.S.C. 316(d) or 326(d); 37 CFR 42.121(a)(2), (a)(3), (b)(1), (b)(2), or 42.221(a)(2), (a)(3), (b)(1), (b)(2)) to the patent owner, but permit the Board to exercise its discretion to determine that the motion to amend complies with the statutory and regulatory requirements of those sections even when the patent owner does not carry its burden of persuasion, when supported by the record and when in the interests of justice. The Office anticipates that the Board will exercise such discretion only in rare circumstances.

To allay fears that the PTAB would place the burden back on Patent Owners post-Aqua Products, the NPRM makes sense from the agency perspective. Undoubtedly, this change will be quickly lauded as “pro-patent,” but, practically speaking, it is unlikely to move the needle in any material regard. The challenge in amending at the PTAB has nothing to do with the relative burdens of the parties. Rather, it is the concern over the creation of an intervening rights defense that drives most away from even considering amending in the first instance. For those that do amend, in an effort to thread the needle on intervening rights, the claim changes are often so slight that they fail to even distinguish over the art of the original trial grounds.

Finally, it remains unclear what (if any) presumption of validity can be accorded to successfully amended claims of an AIA trial. Such claims are not “examined” in the same way as ex parte patent prosecution. The Board’s ability to step in on claims where the petitioner stops participating (and perform a more traditional, government driven examination/review) may address part of that equation, but, a poor petitioner opposition (i.e., petitioner examination) can also lead to newly issued claims.

Public comments on the NPRM are due by December 23, 2019.

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