[Federal Register Volume 88, Number 99 (Tuesday, May 23, 2023)]
[Proposed Rules]
[Pages 33063-33066]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2023-10565]


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DEPARTMENT OF COMMERCE

Patent and Trademark Office

37 CFR Part 42

[Docket No.: PTO-P-2023-0024]


Request for Comments Regarding the Motion To Amend Pilot Program 
and Rules of Practice To Allocate the Burdens of Persuasion on Motions 
To Amend in Trial Proceedings Before the Patent Trial and Appeal Board

AGENCY: United States Patent and Trademark Office, Commerce.

ACTION: Request for comments.

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SUMMARY: The United States Patent and Trademark Office (USPTO or 
Office) currently implements a pilot program for motion to amend (MTA) 
practice and procedures in trial proceedings under the America Invents 
Act (AIA) before the Patent Trial and Appeal Board (PTAB or Board). The 
USPTO seeks public comments on whether the MTA Pilot Program's 
procedures should be

[[Page 33064]]

made permanent, and if so, whether any modifications would be 
beneficial. Additionally, the USPTO previously issued rulemaking 
covering the allocation of the burdens of persuasion in MTA 
proceedings. The USPTO seeks public input on the practical effects of 
the rules on the parties and AIA proceedings, and whether modifications 
to the rules, or additional guidance on implementing the rules, would 
be beneficial. Lastly, the USPTO seeks input on whether the Board 
should have broader authority to raise sua sponte grounds in the MTA 
process.

DATES: Comment Deadline Date: To ensure consideration, commenters must 
submit written comments on or before July 24, 2023.

ADDRESSES: For reasons of government efficiency, comments must be 
submitted through the Federal eRulemaking Portal at 
www.regulations.gov. To submit comments via the portal, enter docket 
number PTO-P-2023-0024 on the homepage and click ``Search.'' The site 
will provide a search results page listing all documents associated 
with this docket. Find a reference to this proposed rulemaking and 
click on the ``Comment'' icon, complete the required fields, and enter 
or attach your comments. Attachments to electronic comments will be 
accepted in ADOBE[supreg] portable document format (PDF) or MICROSOFT 
WORD[supreg] format. Because comments will be made available for public 
inspection, information that the submitter does not desire to make 
public, such as an address or phone number, should not be included in 
the comments.
    Visit the Federal eRulemaking Portal (www.regulations.gov) for 
additional instructions on providing comments via the portal. If 
electronic submission of comments is not feasible due to a lack of 
access to a computer and/or the internet, please contact the USPTO 
using the contact information below for special instructions regarding 
how to submit comments by mail or by hand delivery, based on the 
public's ability to obtain access to USPTO facilities at the time.

FOR FURTHER INFORMATION CONTACT: Miriam L. Quinn, Acting Senior Lead 
Administrative Patent Judge; or Melissa Haapala, Vice Chief 
Administrative Patent Judge; at 571-272-9797 ([email protected] or 
[email protected], respectively).

SUPPLEMENTARY INFORMATION: 

Background

Motion To Amend Pilot Program

    In 2019, the Office implemented an MTA Pilot Program based on 
public feedback. See Notice Regarding a New Pilot Program Concerning 
Motion To Amend Practice and Procedures in Trial Proceedings Under the 
America Invents Act Before the Patent Trial and Appeal Board, 84 FR 
9497 (March 15, 2019) (MTA Pilot Program notice). The MTA Pilot Program 
provides a patent owner with two options if it chooses to file an MTA 
in an AIA trial. The MTA Pilot Program notice (see 84 FR 9497-9507) 
presents information regarding these two options, timelines of due 
dates, and other details, including replies to comments received in 
response to a prior request for comments published on October 29, 2018 
(see 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 (83 FR 54319)) (seeking public comments on a 
previously proposed procedure for MTAs, the Board's MTA practice 
generally, and the allocation of burdens of persuasion after Aqua 
Products, Inc. v. Matal, 872 F.3d 1290 (Fed. Cir. 2017) (en banc) (Aqua 
Products)) (2018 RFC).
    Under the current program, as discussed in the MTA Pilot Program 
notice, a patent owner may choose to request preliminary guidance from 
the Board concerning the originally filed MTA. This non-binding 
preliminary guidance, typically in the form of a short paper, provides 
feedback about whether there is a reasonable likelihood that the MTA 
meets statutory and regulatory requirements for an MTA. MTA Pilot 
Program notice at 9497, 9499. The preliminary guidance also provides 
feedback on whether the petitioner (or the record then before the 
Office, including any opposition to the MTA and accompanying evidence) 
establishes a reasonable likelihood that any of the substitute claims 
are unpatentable based on the preliminary record. Id. at 9497. The 
preliminary guidance focuses on the limitations added in the MTA and 
does not address the patentability of the originally challenged claims. 
Id.
    The patent owner may additionally or alternatively choose to file a 
revised MTA after receiving the petitioner's opposition to the original 
MTA and/or after receiving the Board's preliminary guidance (if 
requested). Id. at 9498. A revised MTA includes one or more new 
proposed substitute claims in place of previously presented substitute 
claims and also may provide new arguments and/or evidence, but only in 
a manner that is responsive to issues raised in the preliminary 
guidance and/or the petitioner's opposition to the MTA. Id.
    A patent owner can avail itself of either, both, or neither of 
these two options. If the patent owner chooses neither of the two 
options, the patent owner can pursue an MTA in practically the same way 
as before the pilot program began. Id. at 9498.
    The MTA Pilot Program is designed to provide a standardized 
framework of MTA procedures and timelines for actions that would 
reasonably fit within the one-year statutory period from institution to 
a final written decision. See, e.g., id. at 9506-07 (providing 
Appendices 1A (PO Reply Timeline) and 1B (Revised MTA Timeline)).
    Shortly after the Office implemented the MTA Pilot Program, it 
issued a Notice Regarding Options for Amendments by Patent Owner 
Through Reissue or Reexamination During a Pending AIA Trial Proceeding 
(April 2019), 84 FR 16654 (April 22, 2019) (reissue and reexamination 
notice). The Office issued this notice in response to comments and 
questions from stakeholders requesting clarification regarding existing 
reissue and reexamination procedures at the Office available while an 
AIA trial proceeding, including any appeal to the U.S. Court of Appeals 
for the Federal Circuit, involving the patent is pending. Id. at 16654-
55. The reissue and reexamination notice provides a summary of various 
pertinent practices regarding existing Office procedures that apply to 
reissue and reexamination, including after a petitioner files an AIA 
petition challenging claims of the same patent, after the Board 
institutes a trial, and after the Board issues a final written decision 
in an AIA trial proceeding. Id. at 16655-58. The notice also provides 
summary information about factors the Office currently considers when 
determining whether to stay or suspend a reissue proceeding, or stay a 
reexamination, that involves a patent involved in an AIA proceeding, 
and also when and whether to lift such a stay or suspension. Id. at 
16656-58.
    In determining whether the MTA Pilot Program should be made 
permanent in its current form, modified in some manner, or replaced, 
the Office seeks the benefit of the public's experience with the 
program.

Rules of Practice To Allocate the Burdens of Persuasion on Motions To 
Amend

    In light of Aqua Products, as well as public comments in response 
to the 2018 RFC and a relevant notice of

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proposed rulemaking dated October 22, 2019 (see Rules of Practice To 
Allocate the Burden of Persuasion on Motions To Amend in Trial 
Proceedings Before the Patent Trial and Appeal Board (84 FR 56401)), in 
2020 the Office revised the rules of practice in AIA trials to allocate 
the burdens of persuasion for MTAs with respect to the patentability of 
proposed substitute claims. 37 CFR 42.121(d), 42.221(d); see Rules of 
Practice to Allocate the Burden of Persuasion on Motions to Amend in 
Trial Proceedings Before the Patent Trial and Appeal Board, 85 FR 82923 
(December 21, 2020) (MTA burden-allocation rules package). The rules 
assign the burden of persuasion to the patent owner to show, by a 
preponderance of the evidence, that an MTA complies with certain 
statutory and regulatory requirements. 37 CFR 42.121(d)(1), 
42.221(d)(1). The rules also assign the burden of persuasion to the 
petitioner to show, by a preponderance of the evidence, that any 
proposed substitute claims are unpatentable. 37 CFR 42.121(d)(2), 
42.221(d)(2). Finally, the rules further specify that irrespective of 
those burdens, the Board may, in the interests of justice, exercise its 
discretion to grant or deny an MTA, but ``only for reasons supported by 
readily identifiable and persuasive evidence of record.'' 37 CFR 
42.121(d)(3), 42.221(d)(3); Hunting Titan, Inc. v. DynaEnergetics 
Europe GmbH, IPR2018-00600 (PTAB July 6, 2020) (Paper 67) (Hunting 
Titan). 85 FR at 82924, 82926-27. The MTA burden-allocation rules 
package explained that the Office expects the Board will exercise its 
discretion only in ``rare circumstances.'' 85 FR at 82928. Such 
situations may include, for example, those in which ``the petitioner 
has ceased to participate in the proceeding or chooses not to oppose 
the motion to amend, or those in which certain evidence regarding 
unpatentability has not been raised by either party but is so readily 
identifiable and persuasive that the Board should take it up in the 
interest of supporting the integrity of the patent system, 
notwithstanding the adversarial nature of the proceedings.'' 85 FR at 
82924, 82927 (citing Hunting Titan, Paper 67 at 12-13, 25-26). In 
instances in which the Board exercises its discretion in the interests 
of justice, the Board will provide the parties with an opportunity to 
respond before rendering a final decision on the MTA. Id. at 82927; see 
also 37 CFR 42.121(d)(3), 42.221(d)(3) (``Where the Board exercises its 
discretion under this paragraph, the parties will have an opportunity 
to respond.'').
    As noted in the MTA burden-allocation rules package, ``[i]n the 
vast majority of cases, the Board will consider only evidence a party 
introduces into the record of the proceeding.'' Id. Thus, ``[i]n most 
instances, in cases where the petitioner has participated fully and 
opposed the motion to amend, the Office expects that there will be no 
need for the Board to independently justify a determination of 
unpatentability.'' Id. at 82927-28. That said, the Board may consider, 
for example, ``readily identifiable and persuasive evidence already 
before the Office in a related proceeding (i.e., in the prosecution 
history of the challenged patent or a related patent or application, or 
in the record of another proceeding before the Office challenging the 
same patent or a related patent).'' Id. at 82927. Likewise, ``the Board 
may consider evidence that a district court can judicially notice under 
Federal Rule of Evidence 201.'' Id.; see also 37 CFR 42.121(d)(3), 
42.221(d)(3) (``[T]he Board may make of record only readily 
identifiable and persuasive evidence in a related proceeding before the 
Office or evidence that a district court can judicially notice.'').
    Subsequent to the issuance of the burden-allocation rules, the 
United States Court of Appeals for the Federal Circuit issued a 
precedential decision in Hunting Titan, Inc., v. DynaEnergetics Europe 
GmbH, 28 F.4th 1371 (Fed. Cir. 2022). The court stated that no court 
precedent has ``established that the Board maintains an affirmative 
duty, without limitation or exception, to sua sponte raise 
patentability challenges to a proposed substitute claim.'' Id. at 1381 
(citations omitted). The court also stated that ``confining the 
circumstances in which the Board should sua sponte raise patentability 
issues was not itself erroneous.'' Id. The court, however, found it 
``problematic'' that the USPTO confined the Board's discretion to only 
rare circumstances. Id. It also noted that the USPTO's ``substantial 
reliance on the adversarial system . . . overlooks the basic purpose of 
[inter partes review] proceedings: to reexamine an earlier agency 
decision and ensure `that patent monopolies are kept within their 
legitimate scope.''' Id. (citations omitted); see id. at 1385 
(concurrence expressing concern that the burden-allocation rule's 
requirement for ``readily identifiable and persuasive evidence'' may 
prevent the Board from raising grounds ``even when no one is around to 
oppose a new patent monopoly grant'').
    The court also clarified that it was ``not decid[ing] whether the 
Board has an independent obligation to determine patentability of 
proposed substitute claims.'' Id. at 1382. Under the rules as currently 
written, the Board retains discretion to raise, or to not raise, 
grounds of unpatentability.
    In light of the court's commentary on both the revised rules and 
the Board's Hunting Titan decision, and the Office's desire to support 
the integrity of the patent system and to issue robust and reliable 
patent rights, the Office seeks public comments on whether the Board 
should have broader authority to raise sua sponte grounds in the MTA 
process. Additionally, the Office seeks public comments on whether, and 
under what circumstances, the Office should solicit patent examiner 
assistance regarding an MTA or conduct a prior art search in relation 
to proposed substitute claims.
    Furthermore, if the Board exercises its discretion and raises its 
own grounds of unpatentability under 37 CFR 42.121(d)(3), the burden-
allocation rule does not specifically state where the burden of 
persuasion lies for Board-raised grounds. One interpretation of current 
Board authority would be that, because this scenario is outside of the 
adversarial process, neither party bears the burden of persuasion. The 
Office seeks public comments on whether the burden-allocation rule 
should be revised to clarify who bears the burden of persuasion for 
grounds of unpatentability raised by the Board under 37 CFR 
42.121(d)(3) or 42.221(d)(3); see also Nike, Inc. v. Adidas AG, No. 
2021-1903, 2022 WL 4002668, at *4-10 (Fed. Cir. Sept. 1, 2022) (finding 
``it unnecessary to determine here whether, in an inter partes review, 
the petitioner or Board bears the burden of persuasion for an 
unpatentability ground raised sua sponte by the Board against proposed 
substitute claims,'' after determining the outcome in the case would be 
the same regardless).

Questions Regarding the Pilot Program and Burdens of Persuasion in 
Motions To Amend

    The Office welcomes any comments from the public on the pilot 
program and burdens of persuasion for MTAs, and in particular, requests 
feedback on the following questions:
    (1) Has the MTA Pilot Program positively or negatively impacted a 
patent owner's ability to successfully amend claims in an AIA 
proceeding? Has it made it more likely that a patent owner will avail 
itself of the MTA process?
    (2) Are there circumstances in which reexamination and/or reissue 
proceedings are better options for patent owners seeking to amend 
claims

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challenged in an AIA proceeding, as compared to the MTA Pilot Program? 
Is there anything more the Office can do to make the MTA process more 
useful to patent owners?
    (3) Should the Office modify any aspect of the MTA Pilot Program? 
Should the Office continue to provide the options of receiving 
preliminary guidance and being able to revise an MTA, as currently 
implemented?
    (4) Assuming the MTA Pilot Program should remain, should any aspect 
of preliminary guidance, as currently provided by the Board, be 
changed?
    (5) What barriers, if any, exist that the Office can address to 
increase the effectiveness of the MTA procedure?
    (6) Should the Office modify its practice of when the Board can or 
should raise a new ground of unpatentability, and if so, how? For 
example, should the PTAB's decision in the Hunting Titan case continue 
to guide when and how the Board can and should raise a new ground of 
unpatentability? If so, why and how?
    (7) Should the Office involve patent examiner assistance in 
relation to MTAs? Should the Office conduct a prior art search in 
relation to proposed substitute claims in certain situations? If so, 
under what circumstances? And should examiner assistance or prior art 
searches be limited in any way?
    (8) Should the Office clarify in its rules where the burden of 
persuasion for Board-raised grounds lies? Who should bear that burden?
    (9) Should any other aspects of the MTA rules (37 CFR 42.121, 
42.221), including as they relate to the Board's discretion to grant or 
deny an MTA, be changed, and if so, how?

Katherine K. Vidal,
Under Secretary of Commerce for Intellectual Property and Director of 
the United States Patent and Trademark Office.
[FR Doc. 2023-10565 Filed 5-22-23; 8:45 am]
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