November 07, 2017

Inter Partes Review and Claim Amendment Strategies after Aqua Products

Robert M. Asher – November 7, 2017

In Aqua Products v. Matal, 872 F. 3d 1290 (Fed. Cir. 2017), the en banc Federal Circuit Court of Appeals struck down the Patent Trial and Appeal Board (PTAB) practice of imposing on the patent owner the burden of proving the patentability of amended claims. Instead, the court has placed on the petitioner the burden of proving unpatentability by a preponderance of the evidence.

Bringing a motion to amend will be much easier and more popular than in the past because the patent owner will now be free in its motion from having to show patentable distinctions over a wide variety of prior art. The amendment process will be further eased if motions to amend are decided on consideration of the entirety of the IPR record, as suggested by Judge O’Malley’s opinion. Patent owners may have less to cram into the 25 pages allotted for a motion to amend.

Strategies for Petitioner
In light of Aqua Products, petitioners are well advised to consider the potential for amendments to the claims of a patent before filing an IPR petition. Given that the time to respond to a motion to amend will likely be less than three months and coincides with the job of preparing and filing a reply to the patent owner response, the petitioner will benefit by getting a jump on searching for prior art and identifying excerpts in the art for use against such an amendment should it be presented.

A concern is that if the patent owner succeeds in amending its claim, it may later urge in court or in the PTO that the petitioner should be estopped from raising challenges it reasonably could have raised during the IPR. The estoppel provisions state “[t]he petitioner in an inter partes review of a claim in a patent…may not assert…that the claim is invalid on any ground that the petitioner raised or reasonably could have raised during the inter partes review.” 35 USC §315(e).

But the petitioner should note that the amended claim is not “in a patent” at any time during the IPR. Only the original claims are in the patent. An amended claim does not appear to fall within the language of the estoppel section. This statute has not been judicially interpreted, however, so a petitioner should be prepared for the possibility that estoppel will later be asserted against it. To ward off such an assertion, the petitioner should seek to make clear any restrictions on its ability to challenge the amended claim during the inter partes review proceeding.

For example, the petitioner should be sure to ask the PTAB for enough time and enough pages to respond to the amended claim, and an opportunity to obtain expert analysis, testing, testimony and cross-examination. To the extent the PTAB limits one’s ability to make out its full case for unpatentability of an amended claim, a court will be more readily persuaded not to apply estoppel.

Strategies for Patent Owners
As for patent owners, the first priority in an IPR is to overcome the asserted grounds and maintain the original claims. The original claims may be effective against past infringement, whereas the substitute claims will not be enforceable until issued assuming substantive changes have been made by the amendment. Moreover, issuance of the substitute claims may be delayed by petitioner’s appeal.

The more expeditious and easier route to amended claims is to file the claims in a continuation application pending before an examiner in the PTO. But patent owners don’t always take the precaution of having a continuation application pending in the PTO.

Without a pending continuation application, patent owners, post-Aqua Products, should consider filing contingent motions to amend during an inter partes review. This type of motion is generally contingent on the original claim being invalidated. The amendment process is relatively short, giving the petitioner a limited opportunity to respond with prior art and argument. If the amended claim issues, even if estoppel is not available to ward off later challenges, the success against the petitioner before the expert patent agency can be expected to have a positive influence in court.

With an easier motion to amend framework in place, patent owners may now have room in their papers to propose substitute claims for several challenged claims. And to improve patent owner’s chances of success, the substitute claims may adopt a variety of different substantive distinctions over the existing claims.

Aqua Products thus opens up a world of opportunity for the patent owner, but the opportunity does not come without its own share of hardships. The patent owner will still need to satisfy 35 USC §316(d)(3) by demonstrating support for the amended claims in the original patent application and showing that the scope of the claims has not been enlarged in any way. Patent owners will also need to adequately distinguish the amended claims over the prior art asserted in the IPR and disclose any prior art known to the patent owner that is material to any features appearing in the new or amended claims.

Robert M. Asher is chair of the patent office litigation group of Sunstein Kann Murphy & Timbers LLP in Boston, Massachusetts.

Copyright © 2017, American Bar Association. All rights reserved. This information or any portion thereof may not be copied or disseminated in any form or by any means or downloaded or stored in an electronic database or retrieval system without the express written consent of the American Bar Association. The views expressed in this article are those of the author(s) and do not necessarily reflect the positions or policies of the American Bar Association, the Section of Litigation, this committee, or the employer(s) of the author(s).

Robert M. Asher – November 7, 2017