It has been argued that the Patent Trial and Appeal Board (PTAB or Board) cannot engage in rulemaking through decisions made by its administrative patent judges (APJs), even if those decisions are made precedential, as APJs are not Article III judges. To address this potential issue, the US Patent and Trademark Office (USPTO) continues its trend to codify case precedent in rules, as authorized by Congress (e.g., via the Administrative Procedures Act).
The most recent example is the USPTO’s recent codification of the burdens of persuasion for substitute claims proposed in motions to amend. On December 18, the USPTO issued a final rule allocating the burdens of persuasion on motions to amend in America Invents Act (AIA) proceedings before the Board. Under this rule, a “patent owner bears the burden of persuasion to show, by a preponderance of the evidence, that the motion to amend complies with” certain statutory and regulatory requirements, while a “petitioner bears the burden of persuasion to show, by a preponderance of the evidence, that any proposed substitute claims are unpatentable.”
When the AIA came into effect in 2011, the USPTO required patent owners to show the patentability of proposed substitute claims in a motion to amend. But the US Court of Appeals for the Federal Circuit struck down this requirement in Aqua Products, Inc. v. Matal, 872 F.3d 1290 (Fed. Cir. 2017) by holding that, in the absence of USPTO rulemaking, the burden of proving the unpatentability of substitute claims proposed in a motion to amend could not be placed on the patent owner. Ever since, the petitioner has carried the burden of unpatentability.
The USPTO further revised the rules of practice to clarify that the Board “may, in the interests of justice, exercise its discretion to grant or deny a motion to amend for reasons supported by readily identifiable and persuasive evidence of record in the proceeding.” However, the “readily identifiable and persuasive evidence” may only be made of record in limited circumstances including (i) evidence in a related proceeding before the USPTO, and (ii) evidence that a district court can judicially notice. The USPTO anticipates that this Board discretion will be limited to rare circumstances. For example, the discretion may allow the Board to address situations in which it would be unjust to deny a motion to amend for a procedural defect.
Notably, the revised rules are consistent with Aqua Products as well as the guidance set forth in recently designated precedential Board decisions, like Lectrosonic and Hunting Titan. For instance, Hunting Titan found that “[the] Office [can] step in if there is a clear failure in that system.” Hunting Titan, IPR2018-00600, Paper 67, at 11 (PTAB July 6, 2020) (precedential). Should the Board “step in,” it has the ability to raise a ground of unpatentability a petitioner has not advanced or has insufficiently developed.”
Although the USPTO’s revised rules of practice are intended to ensure predictability and certainty in the Board’s treatment of substitute claims proposed in a motion to amend, their full impact has yet to be seen. Until then, patent owners and petitioners should take practical steps to ensure that they satisfy their respective burdens of proof.
Law clerk Alexander Wettermann contributed to this LawFlash.
If you have any questions or would like more information on the issues discussed in this LawFlash, please contact the authors, Dion M. Bregman (Silicon Valley) or Ehsun Forghany (Silicon Valley), or any of the following lawyers from Morgan Lewis’s post-grant proceedings team:
Joshua M. Dalton
Andrew V. Devkar
Christopher D. Bright
Louis W. Beardell, Jr.
Brent A. Hawkins
 85 FR 82923, 82935 (Dec. 21, 2020).
 Id. at 82924.
 Id. See also Lectrosonics, IPR2018-01129, Paper 15, at 5-6 (PTAB Feb. 25, 2019) (precedential).