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Amending Patent Claims in Post-Grant Trial Proceedings
The America Invents Act (AIA) gave patent owners the right to move to amend their patent claims in the context of AIA trial proceedings (inter partes review (IPR), post-grant review (PGR), and covered business method patent review (CBM)). To date, however, this right has been more illusory than real because it has been exceedingly rare for the Patent Trial and Appeal Board (PTAB) to grant motions to amend. This became starkly clear when the Board released the results of its study on motions to amend, which showed that it had denied 95% of the motions included in the study. See, April 2016 PTAB Motion to Amend Study, at 4. Successful motions to amend largely have been those that cancelled claims (without seeking to add a substitute claim) — which are typically granted without substantive review, see, id. at 2 — or were agreed to by the parties as part of settling the post-grant proceeding.
Given their dismal success rate so far, many hope that the tide will turn in favor of granting more motions to amend. Indeed, as will be discussed below, the Federal Circuit is currently reviewing aspects of the Board's motion to amend framework en banc in In re: Aqua Products, Inc., Docket No. 2015-1177 (May 25, 2016).
Given the popularity of the PTAB trial proceedings — and the fact that patents involved in post-grant proceedings are often involved in co-pending litigation as well — a more robust mechanism for amending claims could impact a petitioner's calculus in deciding whether to file a petition in the first place. Additionally, because amended claims give rise to intervening rights, litigants in co-pending litigation will need to be mindful of the effect amended claims have on the course of the litigation.
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