Request for Comments on Motion To Amend Practice and Procedures in Trial Proceedings Under the America Invents Act Before the Patent Trial and Appeal Board, 54319-54326 [2018-23187]

Agencies

• DEPARTMENT OF COMMERCE
• Patent and Trademark Office

[Federal Register Volume 83, Number 209 (Monday, October 29, 2018)]
[Notices]
[Pages 54319-54326]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2018-23187]


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DEPARTMENT OF COMMERCE

Patent and Trademark Office

[Docket No. PTO-P-2018-0062]


Request for Comments on Motion To Amend Practice and Procedures 
in Trial Proceedings Under the America Invents Act Before the Patent 
Trial and Appeal Board

AGENCY: United States Patent and Trademark Office, U.S. Department of 
Commerce.

ACTION: Request for comments.

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SUMMARY: This Request for Comments seeks public input on certain 
practices and procedures that the Patent Trial and Appeal Board 
(``PTAB'' or ``Board'') of the United States Patent and Trademark 
Office (``Office'' or ``USPTO'') proposes regarding motions to amend 
filed in inter partes reviews (``IPR''), post-grant reviews (``PGR''), 
and covered business method patent reviews (``CBM'') pursuant to the 
provisions of the Leahy-Smith America Invents Act (``AIA'') providing 
for trial proceedings before the Office. Specifically, the Office seeks 
input on a proposed amendment process that would involve a preliminary 
non-binding decision by the Board that provides information to the 
parties regarding the merits of a motion to amend, and an opportunity 
for a patent owner to revise its motion to amend thereafter. In 
addition, the Office seeks input on a proposed pilot program 
implementing the new amendment process. The Office also seeks input 
regarding whether the Office should continue to allocate the burden of 
persuasion regarding patentability of substitute claims as set forth in 
a recent informative Board decision, as well as any suggestions the 
public may have as to motion to amend practice before the Board 
generally.

DATES: Comment Deadline Date: Written comments must be received on or 
before December 14, 2018, to ensure consideration.

ADDRESSES: Comments should be sent by electronic mail message over the 
internet addressed to: [email protected]. Comments may 
also be submitted by postal mail addressed to: Mail Stop Patent Board, 
Director of the United States Patent and Trademark Office, P.O. Box 
1450, Alexandria, VA 22313-1450, marked to the attention of ``Acting 
Deputy Chief Administrative Patent Judge Jacqueline Wright Bonilla or 
Vice Chief Administrative Patent Judge Michael Tierney, PTAB Request 
for Comments 2018.''
    Although comments may be submitted by postal mail, the Office 
prefers to receive comments by electronic mail message to more easily 
share all comments with the public. The Office prefers the comments to 
be submitted in plain text, but also accepts comments submitted in 
portable document format or DOC format. Comments not submitted 
electronically should be submitted on paper in a format that 
facilitates convenient digital scanning into portable document format.
    The comments will be available for public inspection at the Patent 
Trial and Appeal Board, located in Madison East, Ninth Floor, 600 
Dulany Street,

[[Page 54320]]

Alexandria, Virginia. Comments also will be available for viewing via 
the Office's internet website, https://go.usa.gov/xXXFW. Because 
comments will be made available for public inspection, information that 
the submitter does not desire to be made public, such as address or 
phone number, should not be included in the comments.

FOR FURTHER INFORMATION CONTACT: Jacqueline Wright Bonilla, Acting 
Deputy Chief Administrative Patent Judge, or Michael Tierney, Vice 
Chief Administrative Patent Judge, by telephone at (571) 272-9797.

SUPPLEMENTARY INFORMATION: 

Summary

    In this Request for Comments, the Office seeks feedback and 
information regarding a new amendment process involving a preliminary 
non-binding decision by the Board that provides information to the 
parties regarding the merits of a motion to amend, and an opportunity 
for a patent owner to revise its motion to amend thereafter. The Office 
also seeks feedback and information regarding a proposed pilot program 
implementing the new amendment process before the Board. The goal of 
the proposed amendment process and pilot program is to provide an 
improved amendment practice in AIA trials in a manner that is fair and 
balanced for all parties and stakeholders. In essence, this is proposed 
to be done by: Providing the parties with the Board's initial 
assessment of the proposed amendment early in the process; providing 
meaningful opportunity to revise, and oppose, proposed amendments; and 
ensuring that the amendment process concludes within the 12-month 
statutory timeline.
    The Office has received feedback from the public regarding the 
Board's current motion to amend practice, including some concerns 
regarding the grant rate of claim amendments in AIA trial proceedings. 
As detailed further below, the Office has conducted a study of the 
outcomes of motions to amend decided by the Board and compiled data on 
reasons why motions to amend have been granted or denied. The Office 
now seeks to explore what effect certain proposed changes to the 
Board's procedures described below may have on amendment practice in 
AIA trial proceedings, and to obtain the public's perspectives on the 
potential impacts of such changes.
    In particular, the Office wishes to explore whether, and under what 
circumstances, a preliminary decision by the Board that evaluates a 
motion to amend might prove helpful in an AIA trial amendment process. 
In the Office's current proposal, the Board will provide a patent owner 
an opportunity to file a motion to amend during the course of an AIA 
trial, and an opportunity to revise that motion. By statute, the Board 
may permit additional motions to amend ``as permitted by regulations 
prescribed by the Director.'' 35 U.S.C. 316(d)(2). Under currently 
prescribed regulations, the Board may authorize an additional motion to 
amend when, for example, ``there is a good cause showing.'' 37 CFR 
42.121(c) & 42.221(c).
    In the current proposal, after the patent owner files an initial 
motion to amend and the petitioner has an opportunity to respond, a 
Board panel will provide a preliminary decision addressing the initial 
motion to amend. The preliminary decision may provide information 
relevant to whether the motion to amend meets statutory and regulatory 
requirements, as well as whether the proposed substitute claims meet 
the patentability requirements under the Patent Act in light of prior 
art of record. To the extent it is necessary, the issuance of the 
Board's preliminary decision addressing the initial motion to amend 
will be deemed ``good cause'' for further amendment under 37 CFR 
42.121(c) & 42.221(c).
    Similar to a decision to institute, a preliminary decision on a 
motion to amend will not be binding on the Board's final written 
decision. Both parties will have an opportunity to respond to the 
preliminary decision, and the patent owner will have an opportunity to 
revise its motion to amend after receiving the preliminary decision. 
Thereafter, if the Board determines the petitioner has shown that 
corresponding original challenged claims are unpatentable or that the 
original claims are otherwise cancelled, the Board will consider the 
entirety of the record, including parties' arguments and cited evidence 
relevant to the motion to amend, before reaching a final written 
decision on the substitute claims proposed in the latest version of the 
motion to amend filed by the patent owner.
    In this Request for Comments, the Office also seeks input regarding 
whether the Office should continue to allocate the burden of persuasion 
regarding patentability of substitute claims as set forth in Western 
Digital Corp. v. SPEX Techs., Inc., Case IPR2018-00082 (Paper 13) (PTAB 
April 25, 2018), as well as any suggestions the public may have as to 
motion to amend practice before the Board generally.

Background

    To elicit specific input on the Board's motion to amend practice, 
in June 2014, the Office published a Request for Comments in the 
Federal Register that requested comments on the Board's practice 
regarding motions to amend. See Request for Comments on Trial 
Proceedings Under the America Invents Act Before the Patent Trial and 
Appeal Board, 79 FR 36474 (June 27, 2014).
    Comments from the public (including bar associations, corporations, 
law firms, and individuals) regarding motions to amend ranged from 
seeking no change to the Board's current practice, to proposals for the 
grant of all motions to amend that meet 35 U.S.C. 316(d) statutory 
requirements without a review of patentability. Most comments focused 
on which party should bear the burden of proving the patentability or 
unpatentability of substitute claims proposed in a motion to amend, or 
on the scope of the prior art that must be discussed by a patent owner 
in making a motion to amend. The feedback generally did not relate to 
the timing of motions to amend or other aspects of Board procedure in 
considering such motions. The comments are available on the USPTO 
website: https://go.usa.gov/xXXF8.
    In August 2015, the Office solicited further input from the public 
on ``[w]hat modifications, if any, should be made to the Board's 
practice regarding motions to amend.'' See Proposed Amendments to the 
Rules of Practice for Trials Before the Patent Trial and Appeal Board 
(``Proposed Amendments to the Rules''), 80 FR 50720, 50724-25 (Aug. 20, 
2015). Once again, in relation to motions to amend, most comments 
focused on which party should bear the burden of proof on the 
patentability of substitute claims proposed in a motion to amend. The 
comments are available on the USPTO website: https://go.usa.gov/x5SbK. 
In addition, a few comments suggested using examiners to review the 
patentability of proposed substitute claims. On balance, the Office 
decided at that time not to implement changes to the Board's motion to 
amend procedures through rulemaking, but reaffirmed its commitment to 
continue to evaluate the best way to improve the Board's practice. See 
Proposed Amendments to the Rules, 80 FR at 50724-25; Amendments to the 
Rules of Practice for Trials Before the Patent Trial and Appeal Board, 
81 FR 18750, 18755 (Apr. 1, 2016).
    In an effort to better understand the Board's motion to amend 
practice, the Board undertook in early 2016 a study to determine: (1) 
The number of motions

[[Page 54321]]

to amend that had been filed in AIA trials, both as a cumulative total 
and by fiscal year; (2) subsequent developments in each motion to amend 
(i.e., whether the motion was decided, rendered moot, withdrawn, or 
otherwise dismissed); (3) the number of motions to amend requesting to 
substitute claims that were granted, granted-in-part and denied-in-
part, and denied; and (4) the reasons the Board provided for denying 
entry of substitute claims. See Motion to Amend Study (April 30, 2016), 
https://go.usa.gov/xXXyT; Data for 192 Completed Trials with a Motion 
to Amend, https://go.usa.gov/xXXyZ (last visited Oct. 11, 2018). The 
Board continues to collect data on motions to amend, and has published 
on its website an update to the study through March 31, 2018. See 
https://go.usa.gov/xUJgB (last visited Oct. 11, 2018).
    Data obtained from the study show that patent owners filed motions 
to amend in about 10% (305) of the 3203 completed AIA trials and in 
about 8% (56) of the 725 pending AIA trials--a total of 361 motions to 
amend through March 31, 2018. Although motions to amend are filed in 
less than 10% of AIA trials (completed and pending), current data show 
an increase in the number of motions to amend filed in fiscal year 
2018, when compared to other fiscal years. The number of motions to 
amend filed through the first half of fiscal year 2018 (54) exceeded 
the number of motions to amend filed for the entire fiscal year 2017 
(50), and is approximately equal to the number of motions to amend 
filed for the entire fiscal year 2016 (56).
    The data further show that the Board ruled on a motion to amend 
requesting to substitute claims in 62% (189) of the 305 completed AIA 
trials with amendment motions as of March 31, 2018. In the remaining 
38% (116) of the 305 completed AIA trials, the motion to amend: (a) 
Requested solely to cancel claims (20 or 7%); (b) was rendered moot 
because the panel of judges found the original claims not unpatentable 
or because the panel of judges already decided a motion to amend 
proposing the same substitute claims (35 or 11%); or (c) was not 
decided because the motion was withdrawn or the case terminated prior 
to a final written decision (61 or 20%), respectively. Of the 189 
motions to amend requesting to substitute claims that the Board 
decided, the Board granted the motion to amend in 4% (7) of the trials, 
granted-in-part and denied-in-part the motion to amend in 6% (11) of 
the trials, and denied the motion to amend in 90% (171) of the trials. 
The specific reasons the Board provided for denying or denying-in-part 
the motions to amend are set forth in the table below.

       Reasons for Denying or Denying-in-Part the Motions To Amend
------------------------------------------------------------------------
                                                                Percent
               Reason(s) for denying                Number of   of total
                                                     motions      ***
------------------------------------------------------------------------
Anticipated/obvious over art of record (102/103)..         74         41
Multiple statutory reasons *......................         43         24
Non-statutory subject matter (101)................         12          7
Lack of written description (112).................         14          8
Lack of enablement (112)..........................          3          2
Indefiniteness (112)..............................          1          1
Claims enlarge scope of patent (316)..............         10          5
Unreasonable number of substitute claims (316) **.          3          2
Procedural reasons................................         22         12
                                                   ---------------------
  Total Motions to Amend Denied or Denied-in-Part.        182  .........
------------------------------------------------------------------------
* All motions to amend but one that the Board denied for multiple
  statutory reasons included 35 U.S.C. 102, 103, and/or 112 as a reason
  for denial.
** See also 37 CFR 42.121(a)(3) (stating that the ``presumption is that
  only one substitute claim would be needed to replace each challenged
  claim, and it may be rebutted by a demonstration of need'').
*** The ``Percent of Total'' adds up to slightly more than 100% (i.e.,
  102%) due to rounding of percent numbers for each individual row in
  ``Reason(s) for Denying.''

    As noted above, in 182 AIA trials, the Board has denied or denied-
in-part a motion to amend. In 81% (147) of those trials, the Board's 
final written decision identified at least one statutory ground of 
patentability that the proposed substitute claims did not satisfy. See 
Data for 305 Completed Trials with a Motion to Amend, https://go.usa.gov/xUJgk (last visited Oct. 11, 2018). Using conventional 
patent prosecution as a comparison, the Board's decisions in those 
cases are akin to an examiner rejecting a proposed amended claim 
because it is anticipated, obvious, not adequately described in the 
written description, indefinite, or directed to non-statutory subject 
matter. In 7% (13) of the 182 AIA trials, the Board based a denial on a 
failure by the patent owner to satisfy the statutory requirements of a 
motion to amend under 35 U.S.C. 316(d)(1)(B) and (3) (requiring ``a 
reasonable number of substitute claims'' and stating that an amendment 
``may not enlarge the scope of the claims of the patent or introduce 
new matter''). In the remaining 12% (22) of those trials, the Board 
based a denial solely on procedural reasons, such as a failure to 
provide a claim construction for limitations added in substitute 
claims.
    On October 4, 2017, the en banc United States Court of Appeals for 
the Federal Circuit issued its decision in Aqua Products, Inc. v. 
Matal, 872 F.3d 1290 (Fed. Cir. 2017) (en banc) (``Aqua Products''), 
addressing the burden of persuasion regarding patentability of 
substitute claims presented in a motion to amend. The lead opinion of 
the decision concludes with the following:

    The only legal conclusions that support and define the judgment 
of the court are: (1) The PTO has not adopted a rule placing the 
burden of persuasion with respect to the patentability of amended 
claims on the patent owner that is entitled to deference; and (2) in 
the absence of anything that might be entitled deference, the PTO 
may not place that burden on the patentee.

Id. at 1327.
    In view of the Federal Circuit's holding in Aqua Products, on 
November 21, 2017, the Office issued formal guidance through a 
memorandum from the Chief Administrative Patent Judge (``Guidance 
Memo''). See Guidance on Motion to Amend in View of Aqua Products, 
https://go.usa.gov/xQGAA (last visited Oct. 11, 2018). The Guidance 
Memo explains that, in light of the Aqua Products decision, the Board 
will no longer place the burden of persuasion on a patent owner with 
respect to patentability of the proposed substitute claims presented in 
a motion to amend. The Guidance Memo also notes that a motion to amend 
must continue to satisfy the requirements of 37 CFR 42.121 or 42.221, 
as applicable, that all parties still have a duty of candor under 37 
CFR 42.11, and that the page-limits, type, and timing of briefs remain 
unchanged. Id.
    On December 22, 2017, the Federal Circuit issued a decision in 
Bosch Automotive Service Solutions, LLC v. Matal, 878 F.3d 1027 (Fed. 
Cir. 2017), as amended in part on reh'g (Mar. 15, 2018) (``Bosch''). In 
that decision, the Federal Circuit explained, ``the petitioner bears 
the burden of proving that the proposed amended claims are unpatentable 
by a preponderance of the evidence.'' Id. at 1040. Because the 
petitioner in Bosch had settled with the patent owner, the Federal 
Circuit remanded the case to the Board to evaluate the patentability of 
the amended claims, indicating that the Board must justify any finding 
of unpatentability by reference to the evidence of record in the IPR. 
Id. (``[W]here the challenger ceases to participate in the IPR and the 
Board proceeds to final judgment, it is the Board that must justify any 
finding of unpatentability by reference to the evidence of record in 
the IPR.'') (quoting Aqua Products, 872 F.2d at 1311 (opinion of 
O'Malley, J.)).
    In view of decisions by the Federal Circuit regarding motion to 
amend practice and procedure in AIA trials, as explained above, the 
Board recently de-

[[Page 54322]]

designated as precedential MasterImage 3D, Inc. v. RealD Inc., Case 
IPR2015-00040 (PTAB July 15, 2015) (Paper 42) and de-designated as 
informative Idle Free Sys., Inc. v. Bergstrom, Inc., IPR 2012-00027 
(PTAB June 11, 2013). Concurrently, the Board designated Western 
Digital Corp. v. SPEX Techs., Inc., Case IPR2018-00082 (Paper 13) (PTAB 
April 25, 2018) (``Western Digital order'') as informative to provide 
current guidance on several aspects of the motion to amend practice. 
With respect to the burden of persuasion, the Western Digital order 
explains that under the current state of the law ``the burden of 
persuasion will ordinarily lie with the petitioner to show that any 
proposed substitute claims are unpatentable'' and that the ``Board 
itself may justify any finding of unpatentability by reference to 
evidence of record in the proceeding.'' Id. at 4.
    In light of more than five years' worth of data obtained through 
the above-mentioned Board study, recent Federal Circuit decisions, the 
Guidance Memo, and the Western Digital order (informative), and in an 
effort to continue to enhance the effectiveness and fairness of AIA 
trial proceedings, the Office seeks further specific feedback regarding 
changes to the Board's motion to amend practice and a motion to amend 
pilot program.

Request for Public Comments

    The Office seeks written public comments on an amendment procedure 
in AIA trials that involves the Board issuing a preliminary non-binding 
decision that provides information relevant to the merits of a motion 
to amend, and provides a patent owner with an opportunity to revise its 
motion to amend thereafter. A proposed timeline showing the parties' 
filings and the preliminary decision envisioned under the current 
proposal is set forth in Appendix A1 of this request. An overlay of 
that timeline onto a timeline of an AIA trial considering only the 
patentability of originally challenged claims is set forth in Appendix 
A2. The Office plans to implement such a process as a pilot program, as 
set forth below in greater detail. The Office also seeks comments as to 
whether, in view of recent Federal Circuit case law, it should engage 
in rulemaking to allocate the burden of persuasion when determining 
patentability of substitute claims as set forth in the Western Digital 
order. The Office welcomes any comments from the public on the topics 
covered in this notice. The Office also poses specific questions below, 
and invites public feedback on those questions.

Proposal: Preliminary Decision by the Board on a Motion To Amend and an 
Opportunity To Revise That Motion

    The Office seeks written public comments as to whether, and under 
what circumstances, a preliminary non-binding decision by the Board 
evaluating a motion to amend would be helpful in AIA trials. The 
preliminary decision would initially assess whether a motion to amend 
meets statutory and regulatory requirements, and/or the patentability 
of proposed substitute claims, for example, in light of prior art of 
record in the proceeding.
    In the current proposal, after institution of an AIA trial, a 
patent owner would have an opportunity to file a motion to amend, and 
then revise that motion after receiving the petitioner's opposition and 
the preliminary decision from the Board. Specifically, after a patent 
owner files a motion to amend that proposes substitute claims, and a 
petitioner files an opposition (if it so chooses), the Board would 
present an initial evaluation of the parties' submissions in a 
preliminary decision. The current proposed timing for a motion to 
amend, the preliminary decision, a revision to the motion, and related 
briefing is set forth in Appendix A1.
    After receiving the preliminary decision, a patent owner may file a 
revision to its motion to amend. The revision may include, for example, 
changes to the initially proposed substitute claims to address issues 
identified in the preliminary decision. The petitioner would have an 
opportunity to file an opposition responding to the revised motion to 
amend and the preliminary decision. Before the oral hearing, the patent 
owner also may file a reply to an opposition to the revised motion to 
amend, and the petitioner may file a corresponding sur-reply. During 
the oral hearing itself, both parties may address points raised and 
evidence discussed in the preliminary decision and as briefed by the 
parties.
    Although a preliminary decision would not be binding on the Board's 
subsequent decisions or provide dispositive conclusions regarding 
motion to amend requirements or the patentability of substitute claims, 
it may provide information helpful to the parties, such as to a patent 
owner as it determines whether and/or how to revise its motion to 
amend, or to petitioner as it determines how to respond to a revised 
motion to amend, or to both parties as they determine how to respond to 
information discussed in the preliminary decision itself.
    Preliminary Decision on a Motion to Amend: The Board would provide 
a preliminary decision after the petitioner has an opportunity to file 
an opposition to a patent owner's motion to amend. The preliminary 
decision would provide information relating to whether the motion to 
amend meets the statutory requirements of 35 U.S.C. 316(d) or 326(d) 
and the regulatory requirements of 35 CFR 42.121 or 42.221, and 
information relating to the patentability of the proposed substitute 
claims. To meet statutory and regulatory requirements, a motion to 
amend must, among other things: propose a reasonable number of 
substitute claims; propose substitute claims that do not enlarge claim 
scope or introduce new matter; respond to a ground of unpatentability 
involved in the trial; and set forth written description support for 
each substitute claim. See 35 U.S.C. 316(d) & 326(d); 37 CFR 42.121 & 
42.221; see also Western Digital order, Case IPR2018-00082 (Paper 13) 
(PTAB April 25, 2018).
    Similar to an institution decision, a preliminary decision on a 
motion to amend during an AIA trial would not be binding on the Board, 
for example, when it renders a final written decision. In the current 
proposal, the preliminary decision would indicate whether there is a 
reasonable likelihood that: (1) The patent owner would prevail in 
establishing that the motion to amend meets statutory and regulatory 
requirements, and/or (2) the petitioner would prevail in establishing 
the unpatentability of any proposed substitute claims.
    Depending on the patent owner's response to the initial evaluation 
in the preliminary decision, the case will proceed according to 
Alternative 1 or Alternative 2 discussed below.
    Alternative 1: Patent Owner Reply or Revised Motion to Amend and 
Subsequent Briefing (patent owner has the first opportunity to respond 
to the preliminary decision, as shown in Appendix A1): If the 
preliminary decision indicates that the motion to amend fails to meet 
any statutory or regulatory requirements, or that the petitioner 
demonstrates a reasonable likelihood that it would prevail in 
establishing the unpatentability of any proposed substitute claims in 
view of the current record, the patent owner and petitioner may file 
papers as discussed below.
    Within a certain time frame after receiving the preliminary 
decision, for example, within 1 month, a patent owner may file: (1) A 
reply to the petitioner's opposition to the motion to amend and the 
preliminary decision; or

[[Page 54323]]

(2) a revised motion to amend that revises the proposed new substitute 
claims and provides new arguments and/or evidence as to why the revised 
substitute claims meet statutory and regulatory requirements for a 
motion to amend, as well as arguments and evidence (as patent owner 
chooses to include) relevant to the patentability of the revised 
substitute claims. A revised motion to amend must provide amendments, 
arguments, and/or evidence in a manner that is responsive to issues 
raised in the preliminary decision. A revised motion to amend may not 
include amendments, arguments, and/or evidence that are unrelated to 
issues raised in the preliminary decision or the petitioner's 
opposition to the motion to amend. Generally, the Board will render a 
final written decision only as to the latest-filed version of the 
patent owner's motion to amend and substitute claims proposed therein.
    As shown in Appendix A1, if the patent owner files a reply to the 
petitioner's opposition to the motion to amend and the preliminary 
decision, the petitioner may file a corresponding sur-reply. As also 
shown in Appendix A1, if the patent owner chooses instead to revise its 
motion to amend (file a ``revised MTA''), the petitioner may file an 
opposition to that motion, the patent owner may file a reply to that 
opposition, and the petitioner may file a sur-reply. Thus, if patent 
owner files a reply, rather than a revised motion to amend, there will 
be only two papers filed by the parties after the preliminary decision 
(i.e., the patent owner reply and the petitioner sur-reply), rather 
than all four shown in Appendices A1 and A2. An opposition or reply may 
be accompanied by new evidence that responds to new evidence or issues 
raised in the preliminary decision, or in the corresponding revised 
motion to amend or opposition. A petitioner sur-reply may not be 
accompanied by new evidence other than deposition transcripts of the 
cross-examination of any reply witness. The sur-reply may only respond 
to arguments made in reply briefs, comment on reply declaration 
testimony, and/or point to cross-examination testimony.
    Alternative 2: Petitioner Reply and Patent Owner Sur-Reply 
(petitioner has the first opportunity to respond to the preliminary 
decision): If the preliminary decision indicates that the motion to 
amend meets the statutory and regulatory requirements, and that the 
petitioner does not demonstrate a reasonable likelihood that it would 
prevail in establishing the unpatentability of any proposed substitute 
claims in view of the current record, the petitioner may file a reply 
to the preliminary decision (e.g., within one month after the Board 
provides its preliminary decision), and the patent owner may file a 
sur-reply in response (e.g., within one month after the reply is 
filed). In addition, if patent owner chooses not to file any paper, 
i.e., a reply or a revised motion to amend, within a designated time 
frame for such a paper (e.g., within one month) after the Board 
provides a preliminary decision, the petitioner may file a reply to the 
preliminary decision (e.g., within two weeks thereafter), and the 
patent owner may file a sur-reply in response (e.g., within two weeks 
after the reply is filed).
    Specifically, if the preliminary decision indicates that the Board 
is reasonably likely to deny the motion to amend in relation to at 
least one substitute claim, Alternative 1 applies, as discussed above. 
If the preliminary decision indicates that the Board is reasonably 
likely to grant the motion to amend in relation to all substitute 
claims proposed by the patent owner, however, Alternative 2 applies, 
and petitioner may file the first paper (a reply) in response to the 
preliminary decision. Similarly, if patent owner chooses not to file a 
paper after the Board provides a preliminary decision, Alternative 2 
applies, albeit potentially on an accelerated schedule.
    If Alternative 2 applies, the petitioner reply may be accompanied 
by new evidence that responds to new issues raised in the preliminary 
decision, but the petitioner may not raise a new argument of 
unpatentability that it did not raise in its opposition to the motion 
to amend. The patent owner sur-reply may not be accompanied by new 
evidence other than deposition transcripts of the cross-examination of 
any reply witness. The sur-reply may only respond to arguments made in 
reply briefs, comment on reply declaration testimony, and/or point to 
cross-examination testimony.
    Cross-Examination Through Depositions: In the current proposal, all 
cross-examinations, i.e., depositions, of witnesses in relation to 
direct testimony (provided in declarations) pertaining to a motion to 
amend would occur after the Board issues the preliminary decision on a 
motion to amend.
    Petitioner Ceases to Participate in an AIA Trial and the Board 
Proceeds to a Final Written Decision on a Motion to Amend: If the 
petitioner ceases to participate altogether in an AIA trial in which 
the patent owner files a motion to amend, and the Board nevertheless 
proceeds with the trial thereafter, the Board may, in its discretion, 
solicit patent examiner assistance in the absence of a petitioner 
opposition to a motion to amend. That assistance, e.g., by an examiner 
in the Central Reexamination Unit, could include the preparation of an 
advisory report that initially assesses whether a motion to amend meets 
certain statutory and regulatory requirements (i.e., whether the 
amendment enlarges the scope of the claims of the patent or introduces 
new matter), as well as the patentability of proposed substitute 
claims, for example, in light of prior art that was provided by the 
patent owner and/or obtained in prior art searches by the examiner.
    An examiner advisory report would not include a final determination 
on any ultimate legal conclusion. When preparing an advisory report, 
the examiner would consider relevant papers of record, as well as 
evidence cited therein, with certain exceptions. The examiner would 
take into account affidavits or declarations by witnesses cited by 
parties, but generally would not consider cross-examination testimony 
of such witnesses, engage in witness credibility determinations, or 
address admissibility of evidence. The examiner would conduct prior art 
searches as appropriate, and take into account search results that are 
relevant to the substitute claims when preparing an advisory report. 
The examiner will not, however, search on or address the original 
claims.
    An examiner advisory report would not be binding, but may assist 
the patent owner and the Board during an AIA trial proceeding. Similar 
to inter partes reexamination, an examiner would not conduct interviews 
or otherwise interact directly with the parties. Rather, as needed, the 
patent owner may contact the Board with questions or request a 
conference call with the panel. Depositions or other requests for 
discovery or testimony regarding an examiner's decision-making process 
would be denied pursuant to the Manual of Patent Examining Procedure 
1701.
    If the Board seeks examiner assistance prior to issuing a 
preliminary decision, the patent owner may respond to the examiner 
advisory report and the preliminary decision in a reply or a revised 
motion to amend filed after the preliminary decision. If the Board 
seeks examiner assistance after issuing a preliminary decision and 
after the patent owner files a revised motion to amend, the patent 
owner may respond to the preliminary decision and the examiner advisory 
report in a reply. A patent owner reply or revised motion to

[[Page 54324]]

amend may be accompanied by new evidence that responds to new prior art 
or issues raised in an examiner advisory report or discussed in the 
preliminary decision.

Proposed Pilot Program

    The Office is also seeking input on the use of a pilot program to 
implement the proposed amendment process discussed above. As part of 
the pilot program, the Board will issue a preliminary decision after 
receiving a patent owner's motion to amend and any opposition by a 
petitioner, and a patent owner would have an opportunity to file a 
revised motion to amend, as described above. The currently proposed 
briefing schedule for the pilot program is set forth in Appendix A1.
    Conduct of Proposed Pilot Program: The Office anticipates that it 
will implement the pilot program shortly after the comment deadline for 
this Request for Comments ends on December 14, 2018. The Office plans 
to issue a notice to the public providing any necessary additional 
details of the pilot program shortly before implementation. Once the 
pilot program begins, the Office likely will conduct it for at least 
one year, and the program may be extended beyond that time. The Office 
would provide notice of any extension prior to expiration of the pilot.
    The Office may implement the pilot program so that the new 
procedure is used in every AIA trial proceeding involving a motion to 
amend where the Board issues a decision to institute a trial after the 
implementation date of the pilot program. In AIA trial proceedings 
where the Board has instituted a trial before the implementation date 
of the program, the motion to amend process would proceed under 
currently existing procedures. Once implemented as a pilot program, the 
new amendment procedure would be the only option available for amending 
claims in AIA proceedings. That is to say, the current amendment 
process would no longer be available as an option. The program is a 
``pilot'' in the sense that the Office may modify the amendment 
procedures in response to feedback and experience with the program, 
during the course of the pilot. The Office requests feedback and 
comment in this regard, and also as to whether it should consider not 
proceeding with the program in AIA trials where both parties agree to 
opt-out of the program.
    The Office would then consider the results of this pilot program in 
determining how to refine this approach going forward.

Potential Rulemaking To Allocate the Burden of Persuasion as Set Forth 
in the Western Digital Order

    The Office also requests comments from the public regarding whether 
it should engage in rulemaking to allocate the burden of persuasion as 
suggested by the Aqua Products en banc court, and if so, whether the 
Office should allocate that burden as set forth in the Western Digital 
order. Specifically, the Western Digital order provides that ``the 
burden of persuasion will ordinarily lie with the petitioner to show 
that any proposed substitute claims are unpatentable'' and that the 
``Board itself also may justify any finding of unpatentability by 
reference to evidence of record in the proceeding.'' Western Digital 
order 4. ``Thus, the Board determines whether substitute claims are 
unpatentable by a preponderance of the evidence based on the entirety 
of the record, including any opposition made by the petitioner.'' Id.
    The Office seeks public comment on the circumstances in which the 
Board itself may justify findings of unpatentability, for example: When 
the petitioner has ceased to participate in the proceeding; when the 
petitioner remains in the proceeding but chooses not to oppose the 
motion to amend or a subset of proposed substitute claims in the motion 
to amend; or when the petitioner opposes the motion to amend but fails 
to take into account all aspects of the record before the Board. The 
Office does not envision, however, that allowing the Board to justify 
any findings of unpatentability would limit a petitioner's ability to 
submit its own arguments or evidence regarding unpatentability, or 
prevent the Board from adopting a petitioner's arguments in deciding 
the motion to amend. Moreover, the Board is not required to make any 
determinations of unpatentability in situations where the petitioner, 
for any reason, has not established that proposed substitute claims are 
unpatentable by a preponderance of the evidence. In other words, the 
Board is permitted, but not required, to find claims unpatentable for 
reasons other than those advanced by the petitioner as long as the 
patent owner has notice and an opportunity to be heard.
    In addition, the Office seeks public comment on how, if at all, 
adoption of the proposed motion to amend process would affect the 
allocation of the burden of persuasion as set forth in the Western 
Digital order.

Questions Regarding the Proposed Amendment Process and Pilot Program

    The Office welcomes any comments from the public on the proposed 
amendment process and pilot program, and would be particularly 
interested in the public's input on the questions and requested 
information noted below.
    1. Should the Office modify its current practice to implement the 
proposal summarized above and presented in part in Appendix A1? Why or 
why not?
    2. Please provide comments on any aspect of the proposed amendment 
process, including, but not limited to, the content of the papers 
provided by the parties and the Office and the timing of those papers 
during an AIA trial.
    3. How does the timeline in Appendix A1 impact the parties' 
abilities to present their respective cases? If changes to the timeline 
are warranted, what specific changes are needed and why?
    4. If the Office implements this proposal, should the Board prepare 
a preliminary decision in every proceeding where a patent owner files a 
motion to amend that proposes substitute claims?
    5. What information should a preliminary decision include to 
provide the most assistance to the parties in presenting their case? 
For example, is there certain information that may be particularly 
useful as the parties consider arguments and evidence to present in 
their papers, how issues may be narrowed for presentation to the Board, 
and/or whether to discuss a settlement?
    6. If the Office implements this proposal, should there be any 
limits on the substance of the claims that may be proposed in the 
revised motion to amend? For example, should patent owners be permitted 
only to add limitations to, or otherwise narrow the scope of, the 
claims proposed in the originally-filed motion to amend?
    7. What is the most effective way for parties and the Office to use 
declaration testimony during the procedure discussed above? For 
example, how and when should parties rely on declaration testimony? 
When should cross-examination of declaration witnesses take place, if 
at all, in the process? At what stage of briefing should a party be 
able to rely on cross-examination (deposition transcripts) testimony of 
a witness?
    8. If a petitioner ceases to participate in an AIA trial and the 
Board solicits patent examiner assistance regarding a motion to amend, 
how should the Board weigh an examiner advisory report

[[Page 54325]]

relative to arguments and evidence provided by a patent owner? What 
type of assistance or information should a patent examiner provide? 
Should prior art searches by examiners be limited to those relevant to 
new limitations added to proposed substitute claims and reasons to 
combine related to such limitations?
    9. Should the Board solicit patent examiner assistance in other 
circumstances, and if so, what circumstances? For example, should the 
Board solicit patent examiner assistance when the petitioner remains in 
the AIA trial but chooses not to oppose the motion to amend?
    10. Should a motion to amend filed under the proposed new process 
be contingent or non-contingent? For purposes of this question, 
``contingent'' means that the Board will provide a final decision on 
the patentability of a proposed substitute claim only if it determines 
that a corresponding original claim is unpatentable (as in the current 
proposal); and ``non-contingent'' means that the Board will provide a 
final decision on the patentability of substitute claims in place of 
determining the patentability of corresponding original claims.
    11. If the Office implements the proposal in which the Board issues 
a preliminary decision on a motion to amend, as discussed above, should 
any additional changes be made to the current default trial schedule to 
accommodate the new practice?
    12. What impact would implementing the proposals above have on 
small or micro entities who participate as parties in AIA trial 
proceedings?
    13. Should the Office consider additional options for changing the 
timing and/or the Board's procedures for handling motions to amend that 
are not covered by the proposals above? If so, please provide 
additional options or proposals for the Office to consider, and discuss 
the advantages or disadvantages of implementation.
    14. Should the Office consider not proceeding with the pilot 
program in AIA trials where both parties agree to opt-out of the 
program?

Questions Regarding Potential Rulemaking To Allocate Burden of 
Persuasion as Set Forth in the Western Digital Order

    15. Should the Office engage in rulemaking to allocate the burden 
of persuasion regarding the patentability of proposed substitute claims 
in a motion to amend as set forth in the Western Digital order? What 
are the advantages or disadvantages of doing so?
    16. If the Office continues to allocate the burden as set forth in 
the Western Digital order, under what circumstances should the Board 
itself be able to justify findings of unpatentability? Only if the 
petitioner withdraws from the proceeding? Or are there situations where 
the Board itself should be able to justify findings of unpatentability 
when the petitioner remains in the proceeding? What are the advantages 
or disadvantages?
    17. If the Office adopts the current proposal including a 
preliminary decision by the Board on a motion to amend, do the answers 
to questions 15 and 16 change?

    Dated: October 19, 2018.
Andrei Iancu,
Under Secretary of Commerce for Intellectual Property, Director of the 
United States Patent and Trademark Office.
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Appendix A1
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Appendix A2

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[FR Doc. 2018-23187 Filed 10-26-18; 8:45 am]
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