January 19, 2021

On January 20, 2021, and further to Aqua Prods., Inc. v. Matal, 872 F.3d 1290 (Fed. Cir. 2017) (en banc), new rules allocating the burdens of persuasion for motions to amend in IPR, PGR, and CBM proceedings, and the patentability of substitute claims proposed therein, went into effect and will apply to all motions to amend filed on or after this date. See 85 Fed. Reg. 82923 (published December 21, 2020).  Under the new rules, the burden to show that the proposed substitute claims in a motion to amend are unpatentable is on the petitioner, while the burden to show that a motion to amend complies with certain statutory and regulatory requirements for such motions is on the patent owner.  The rules also provide that, in the interests of justice, the PTAB can “exercise its discretion to grant or deny a motion to amend only for reasons supported  by readily identifiable and persuasive evidence of record in the proceeding.” Id. at 82924.  It is expected that the PTAB will exercise this discretion in rare circumstances. Id.