By statute, the Patent Trial and Appeal Board (PTAB) is required to issue a final written decision within one year of the date on which an inter partes review (IPR) is instituted. 35 U.S.C. § 316(a)(11). However, Congress granted the Director of the Patent Office discretion to extend the one-year period “not more than 6 months” if there is “good cause shown.” Id. In five years of conducting IPR trials, the PTAB did not extend the one-year period for issuing a final written decision in IPR proceedings not involving a joined petition. On October 6, 2017, the PTAB extended the one-year period for the first time to consider the impact of the Federal Circuit’s en banc decision in Aqua Products, Inc. v. Matal, 2017 WL 439000 (Oct. 4, 2016). Minerva Surgical, Inc. v. Hologic, Inc., IPR2016-00868, Paper 57 (PTAB Oct. 6, 2017).
Impact of Aqua Products
As discussed in our recent article, the Federal Circuit narrowly held in Aqua Products that, under the current statutory and regulatory scheme, petitioners, not patent owners, have the ultimate burden of persuasion for proposed substitute claims submitted with a motion to amend under 35 U.S.C. § 316(d). The PTAB previously required patent owners to have the burden of persuasion to prove that proposed substitute claims are patentable.
In Minerva Surgical, Inc. v. Hologic, Inc., the PTAB instituted trial on October 6, 2016. After conferring with the PTAB panel, the patent owner (Hologic) filed a motion to amend on January 11, 2017. After the parties submitted all substantive briefing, an oral hearing was conducted on June 11, 2017. The PTAB was scheduled to issue its final written decision on October 6, 2017, one year after the date of institution. But just two days before, the Federal Circuit issued its fractured decision in Aqua Products.
Good Cause Shown
On October 6, 2017, Chief Judge David P. Ruschke issued a paper entitled “Grant of Good Cause Extension” in Minerva Surgical, IPR2016-00868, Paper 56. As authorized by 37 C.F.R. § 42.100(c), the Chief Judge determined that good cause existed to extend the one-year period for issuing a final written decision in view of the Federal Circuit’s en banc decision in Aqua Products just two days prior. The Chief Judge noted that the en banc Federal Circuit was divided, issuing a 148-page decision comprising five separate opinions. IPR2016-00868, Paper 56 at 2.
The Chief Judge explained that “Aqua Products affects the burden of proof the Board applies, and may affect the parties’ arguments and the Board’s analysis of the evidence and arguments presented, with respect to the pending Motion to Amend in this case.” Id. The Chief Judge also indicated that the timing of the Aqua Products decision was impactful, because there was a “limited amount of time for the Board and parties to analyze the guidance provided in Aqua Products and apply it to this proceeding.” Id. In view of these factors, the Chief Judge determined that “good cause exists to extend the one-year period for issuing a Final Written Decision.” Id.
With the Chief Judge’s authorization, the PTAB panel informed the parties that the one-year period for issuing a final written decision would be extended “by up to six months,” and that the panel would “contact the parties to arrange for a conference call to discuss the impact of Aqua Products…on the present proceeding.” IPR2016-00868, Paper 57 at 2.
Parties in IPR proceedings with pending motions to amend should consider contacting the PTAB to request the opportunity to provide additional briefing on the impact of Aqua Products. It remains to be seen whether Aqua Products will have a significant impact on the rate of success for motions to amend, but the shifting of the burden of persuasion from patent owners to petitioners is sufficient justification to request additional briefing.