On October 21, 2019, the Patent Trial and Appeal Board ("PTAB") of the United States Patent and Trademark Office ("USPTO") provided a Notice of Proposed Rulemaking ("NPRM") concerning their rules of practice in allocating burdens of persuasion on motions to amend in America Invents Act ("AIA") trial proceedings before the PTAB. These new proposed rules will allocate to patent owners the burden of demonstrating that a motion to amend complies with necessary statutory and regulatory requirements, and to petitioner, the burden to show the unpatentability of substitute claims proposed in a motion to amend. In addition, the proposed rules grant the PTAB discretion to, in the interests of justice, grant or deny a motion to amend based on the record in the proceeding and regardless of the burdens assigned to any party.
The NPRM indicates that its purpose is to "issue specific rules applicable to motions to amend," a move that is due in part to the Federal Circuit's decision in Aqua Prods., Inc. v. Matal, 872 F.3d 1290 (Fed. Cir. 2017) (en banc) ("Aqua Products"), in which the Federal Circuit concluded, among other things, that the USPTO had not yet adopted a rule allocating the burden of persuasion with respect to the patentability of proposed substitute claims in AIA trials. For further background, see our post on Aqua Products and subsequent posts on related developments following Aqua Products. In light of Aqua Products, as well as comments received from the public in response to a Request for Comments, the USPTO proposes specific rules1 concerning burdens of persuasion in motions to amend.
The NPRM adds identical subsections addressing burdens of persuasion to 37 C.F.R. §§ 42.121 (provisions for inter partes review) and 221 (provisions for post-grant review) for "[a]mendment of the patent" in AIA trials:
(d) Burden of Persuasion. On a motion to amend:
(1) A patent owner bears the burden of persuasion to show, by a preponderance of the evidence, that the motion to amend complies with the requirements of paragraphs (1) and (3) of 35 U.S.C. 316(d), as well as paragraphs (a)(2), (3), (b)(1), and (2) of this section;
(2) A petitioner bears the burden of persuasion to show, by a preponderance of the evidence, that any proposed substitute claims are unpatentable; and
(3) Irrespective of paragraphs (d)(1) and (2) of this section, the Board may, in the interests of justice, exercise its discretion to grant or deny a motion to amend for any reason...