Fildes & Outland, P.C.

PTAB Releases Motion to Amend Study Installment 4 and Trial Practice Guide Update

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The PTAB recently released Installment 4 of the Motion to Amend Study, with cumulative data through March 31, 2018, as well as an AIA Trial Practice Guide Update (August 2018 revision).

The Motion to Amend Study began in April of 2016 and has now been updated three times, with the current installment (no. 4) including data through the first half of the 2018 USPTO fiscal year (FY 2018).  The current results of the study essentially can be summarized as follows.  In all the AIA trials from October 1, 2012 through March 31, 2018, a motion to amend was filed only 9% of the time (361 out of 2898 trials), 8% being completed trials and 1% being trials that are still pending.  Of those completed trials in which a motion to amend was filed (the 8% of the total trials), the motion to amend was decided on the merits 62% (approximately two thirds) of the time.  The other 38% involved cases in which the motion simply canceled claims, the motion was rendered moot, or the motion was not decided because the trial was terminated before a final written decision.  Of the trials in which the motions to amend were considered on the merits and decided (189 trials), 90% of the motions were denied, 4% were granted, and 6% were granted in part.  Thus, of the small percentage of total trials in which a motion to amend was filed, only a small percentage of the motions were eventually granted.  The vast majority of the motions to amend that were decided on the merits were denied.

The Study also provided a breakdown of the reasons for denying a motion to amend.  12% of the motions were denied for procedural reasons, while the other 88% were denied for statutory reasons, including one or more of Section 102/103 issues, Section 112 issues, Section 101 issues, and Section 316 issues.

Further, the Study points out that more motions to amend have been filed in the first half of FY 2018 than the entire previous fiscal year, and that the number of motions to amend filed in the first two quarters of FY 2018 exceeded the number of motions to amend in any other two consecutive quarters.  However, the number of trials in which a motion to amend has been filed is still small relative to the total number of trials.

Also, the data (other than the number of motions filed by fiscal year and quarter) is cumulative.  Thus, the Study does not indicate whether the rate of grant has changed since the implementation of the AIA trial process, such as by providing a grant rate for each year from fiscal year 2013 to fiscal year 2018.

Turning to the AIA Trial Practice Guide, the PTAB has now published the first revision/update to the original Trial Practice Guide of August 2012.

The August 2018 Trial Practice Guide Update includes a new section (Section I.G.) on the use of expert testimony.  The August 2018 Update also includes revisions/additions to Section II.A.3. (word count and page limits), Section II.D.2. (considerations in instituting a review), Section II.I. (replies and sur-replies), Section II.K. (admissibility, motions to exclude, and motions to strike), and Section II.M. (oral hearing, pre-hearing conference), as well as an updated Appendix A (sample scheduling order).

More particularly, Section I.G. has been added to explain the use of expert testimony.  Section II.A.3. has been updated to reflect previous changes to the word counts and page limits provided in 37 CFR 42.24.  Section II.D.2. has been updated to discuss various non-exclusive factors that the PTAB may consider when determining whether to institute a trial, including cases in which the petition is a follow-on petition challenging the same patent as a previous AIA trial or cases in which the same or substantially same prior art or arguments were previously presented to the USPTO.  Section II.I. has been updated to discuss the contents and uses of replies and sur-replies.  Section II.K. has been updated to explain the use of and differences between motions to exclude and motions to strike.  Section II.M. has been updated to discuss the use of live testimony at oral hearings (typically only when the demeanor of a witness is critical to credibility), and to provide for a pre-hearing conference to resolve issues prior to oral hearing.

The PTAB anticipates that there may be further revisions to the Trial Practice Guide in the future.


A copy of the Motion to Amend Study may be accessed at https://www.uspto.gov/sites/default/files/documents/PTAB%20MTA%20Study%20%28Installment%204%20-%20update%20through%2003-31-2018%29.pdf.  A copy of the August 2018 PTAB Trial Practice Guide Update may be accessed at https://www.uspto.gov/sites/default/files/documents/2018_Revised_Trial_Practice_Guide.pdf.

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