American Bar Association Annual Meeting of Intellectual Property Law Section – Motions to Amend in AIA Trials, and Appealability of Institution Decisions in AIA Trials

Jonathan Bowser, Counsel in Buchanan’s Intellectual Property section, presented “The Burdens of Persuasion and Production Involved with Motions to Amend” to the Council of the Intellectual Property Law Section of the American Bar Association (ABA-IPL) at the Section’s Annual Meeting in Arlington, Virginia.  Jonathan’s presentation advocated for Council to adopt a resolution stating that petitioners in IPR, PGR or CBM trials before the Patent Trial and Appeal Board (PTAB) should have the ultimate burden of persuasion to prove unpatentability of proposed amended claims presented with a motion to amend. Following Jonathan’s presentation and debate of the issue, Council voted to adopt the resolution. The America Invents Act (AIA) of 2011 created inter partes review (IPR), post-grant review (PGR) and covered business method review (CBM) to serve as alternatives to district court litigation to challenge the validity of granted patent claims.

Jonathan also presented “The Scope of the ‘No Appeal’ Bar of Issued Addressed in IPR, CBM or PGR Proceedings Before the PTAB” to Council at the Annual Meeting.  Jonathan’s presentation advocated that the “No Appeal” provision of 35 U.S.C. 314(d) and 324(e) should be limited to the Patent Office’s determination on issues related to the patentability of the claims challenged in the petition, and not to issues unrelated to the patentability of the claims. Following Jonathan’s presentation and debate of the issue, Council voted to adopt the resolution.