This article originally was published in the IAM Yearbook: Building IP value in the 21st century 2020.
Since the enactment of the America Invents Act in Autumn 2012, litigating patentability challenges before the PTAB has generally been viewed as an all-or-nothing proposition. Although the enacting legislation and the implementing rules have always provided patent owners with the option of filing a motion to amend (MTA) the challenged patent’s claims during a PTAB trial, the reality was that few such motions were filed, and a very small percentage of those were granted. That picture began to change with the Federal Circuit’s decision in Aqua Products in 2017, and the tide has now turned with the announcement by the USPTO in March 2019 of a formal pilot programme designed to allow patent owners to more readily amend their patent’s claims during PTAB trials, such as inter partes reviews and post-grant reviews.
This evolving trend in MTAs is largely good news for patent owners, increasing their options in the context of saving a challenged patent claim, albeit a narrower one. The USPTO had previously signalled its desire to make the MTA option more popular among patent owners, and with the pilot programme now in place, early results from the first five months of 2019 show a marked uptick in the number of motions filed. In response to Aqua Products, and clear indications from the USPTO’s top brass that the agency was interested in encouraging patent owners to pursue amended claims through the filing of MTAs, the number of such filings began to increase from 47 in 2016 to 73 in 2017 and 100 in 2018, with a projected 134 for 2019, based on Lex Machina research tracking MTA filings in the first five months of 2019 (see Figure 1).
Brent Babcock represents high-technology clients in every aspect of intellectual property disputes, focusing on federal district court litigation throughout the country, trials and post-grant patent proceedings before the USPTO's Patent Trial and Appeal Board and alternative dispute resolution (ADR) proceedings, including domestic and international arbitrations. His practice also includes pre-litigation counseling, pre-interference and post-grant proceeding consulting, and appellate briefing and oral argument before the United States Court of Appeals for the Federal Circuit.