In the past, moving to amend the challenged claims during IPR was largely futile. The PTAB denied nearly all motions to amend, and many patent owners that might have benefited from amendment chose not to pursue it. But the rules concerning amendment in IPR are changing, and the number and success rate of motions to amend are ticking up. Patent owners have new reasons to think that amendment might save their patents from IPR.
The first sign that the amendment logjam in IPR is loosening was the Federal Circuit’s 2017 decision in Aqua Products. That decision shifted the burden of proof on the question of whether the amended claims were patentable from the patent owner proposing them to the petitioner that brought the IPR. In the year since Aqua Products, patent owners have filed more motions to amend than in any prior year, according to USPTO statistics. And the success rate of motions to amend increased from about 8% before Aqua Products to about 20% after.
Another significant change to amendment in IPR is the USPTO’s new program for handling motions to amend. In the past, patent owners had one chance to prove that the amended claims were patentable. But on March 15, 2019, the USPTO began a new program that allows patent owners the option of filing a revised motion to amend after receiving the PTAB’s preliminary guidance and/or receiving the petitioner’s opposition.
The new procedures recently got their first test when Sanofi-Aventis became the first patent owner to receive the PTAB’s feedback on its motion to amend claims challenged in IPR by Mylan Pharmaceuticals. While the PTAB found that the amended claims were likely obvious over the prior art, the Board explained that their findings were preliminary. Whereas Sanofi-Aventis may have been done under the old procedures, the new procedures allowed Sanofi to file a revised motion to amend.
Patent owners are taking advantage of the new amendment procedures. The first opportunity for a patent owner to file a motion to amend under the pilot program was June 7, 2019 and the first motion to amend requesting preliminary guidance was filed on June 25th. Of the cases that have been instituted since March 15, 2019, around 80% of motions to amend have requested preliminary guidance from the Board.
And more developments are yet to come. For example, earlier this month in Hunting Titan, Inc. v. DynaEnergetics GmbH & Co. KG (IPR2018-00600), the PTAB’s Precedential Opinion Panel announced it would consider whether the PTAB can reject claims based on reasons not raised by the petitioner, and if so, whether the PTAB must give the parties an opportunity to respond to those new reasons.
Of course, amendment in IPR still creates risks. The amended claims must face all invalidity theories, including those that would not otherwise be part of IPR. In fact, most motions to amend are denied for reasons that would not otherwise come up in IPR. Further, amendment may prevent the patent owner from recovering past damages. Patent owners should, therefore, consider all options to address issues with the claims, including reissue and reexamination. But if current trends continue, patent owners may find that amendment in IPR is increasingly an option worth pursuing.