Federal Circuit Grants En Banc Review Of Amendment In AIA Trials
August 31, 2016
Successful motions to amend in AIA trials continue to be rare. The Patent Trial and Appeal Board conducted and published a Motion to Amend Study this year: as of April 30, 2016, the Board had completed 1539 trials; 192 of those trials included a motion to amend. Of those, only 118 amendments were ultimately decided by the Board. And only six amendments (approximately 5%) were granted or granted-in-part.
The Board itself has wrestled with the first question in previous final written decisions. For example, in a precedential decision in MasterImage 3D, Inc. (IPR2015-00040) the Board effectively relaxed the patent owner’s burden for amendment, clarifying that the patent owner’s burden to amend requires a showing of patentability over only the “prior art of record,” rather than all prior art.
Still, many patent owners like Aqua Products Inc. contend their burden should be further relaxed in seeking amendment in AIA trials.
Allison W. Dobson, Ph.D.
Michael T. Morlock