Tag Archives: Lectrosonics

2019 PTAB Year in Review – Part II: NEW HOPE FOR PATENT OWNER AMENDMENTS

By Tom Engellenner
The en banc Federal Circuit decision in 2017 in Aqua Products v. Matel, 872 F. 3d 1290 (Fed. Circ. 2017) threw out the original USPTO rule that the patent owner had the burden of persuasion regarding patentability of claim amendments. The Aqua Products decision was based somewhat on a technicality – that USPTO had failed to engage in formal rule-making and, hence, its interpretation of the America Invents Act (AIA) was not entitled to deference.

For a while, it was not clear whether the USPTO would proceed with a formal rule-making process and try to maintain its rule on burden of proof.  However, early in 2019, the PTAB issued a “precedential” opinion in Lectrosonics, Inc. v. Zaxcam, Inc., IPR2016-01120 (Feb. 25, 2019) explicitly adopting the new practice of placing the responsibility on the petitioner who challenges a patent to also show that any new claims presented by the patent owner by amendment are invalid.

This was followed by proposed formal rules in October, 2019 codifying the Lectrosonics holding that the petitioner who initiates a patent challenge will not only have the burden of persuading the PTAB that a patent owner’s claims as issued are invalid but will also have the same burden with regard to new claims that the patent owner may present by amendment during the proceeding.  The USPTO is expected to finalize this rule shortly.

At least one patent owner that had initially had its motion to amend denied has taken advantage of the Aqua Products decision.  On remand from the Federal Circuit, the Patent Trial and Appeal Board (PTAB) has granted a motion to amend in a patent directed to methods of treatment using cabazitaxel, a taxane compound. Mylan Labs. Ltd. v. Aventis Pharma S.A., IPR 2016-00712, Paper 112 (Oct. 22, 2019).

The PTO also appears to be taking proactive steps to help patent owners navigate the amendment process. On March 15, 2019, a notice of a pilot program was published for “motion to amend practice and procedures in trial proceedings under the America Invents Act (AIA) before the PTAB.” Continue reading →

PTAB PROPOSES RULES ON BURDEN OF PROOF FOR AMENDMENTS DURING AIA TRIALS

By Tom Engellenner
In a proposed rule published in the Federal Register on October 22, 2019, the U.S. Patent and Trademark Office (USPTO) has finally moved to codify a change in the way its Patent Trial and Appeal Board (PTAB) conducts administrative patent challenge proceedings (inter partes reviews, covered business method patent reviews, and post-grant reviews) established by the 2011 America Invents Act (AIA).

Under the proposed rule, the petitioner who initiates a patent challenge will not only have the burden of persuading the PTAB that a patent owner’s claims as issued are invalid but will also have the same burden with regard to new claims that the patent owner may present by amendment during the proceeding.

The proposed new rule is hardly a change in practice since the PTAB has essentially been following this practice for the past two years after the Court of Appeals for the Federal Circuit rejected its old rule placing the burden of proof for amendments on the patent owner.

During the first five years of administrative trials under the AIA, the tactic of amending claims to overcome prior art was largely an illusory exercise in part at least because of the original USPTO rule. However, an en banc Federal Circuit decision in Aqua Products v. Matel, 872 F. 3d 1290 (Fed. Circ. 2017) threw out the original USPTO rule.

Continue reading →