Despite Change in Motion to Amend Practice by Aqua Products, PTAB Orders Scope of Remand to be Limited to Federal Circuit’s Decision

by Knobbe Martens

Knobbe Martens

In an IPR on remand from the Federal Circuit on appeal of a motion to amend, the PTAB considered the scope of briefings of the parties in view of the Federal Circuit’s recent en banc decision Aqua Products v. Matal. The PTAB ordered that the remand be limited to the Federal Circuit’s remand instructions on reevaluating the original PTAB decision, without reconsidering all issues overturned in Aqua Products.

Takeda Pharmaceutical Company Limited appealed a Final Written Decision by the PTAB that determined that several claims of Takeda’s patent were unpatentable during an IPR. See Takeda Pharm. Co. Ltd. v. Array Biopharma Inc., No. 2017-1079, 2017 WL 6568764 (Fed. Cir. Dec. 26, 2017). The PTAB also denied Takeda’s contingent motion to amend, partly because proposed substitute claims 26-29 lacked written description. See Array BioPharma Inc. v. Takeda Pharm. Co., IPR2015-00754, Paper 61, 2016 WL 8999741, at *17-19 (P.T.A.B. Aug. 12, 2016). The Federal Circuit found that the PTAB erred in finding that proposed claims 26-29 depend from claim 18, when in fact, claims 27 and 29 depended respectively from independent claims 26 and 28. See Takeda Pharm., 2017 WL 6568764, at *5. The PTAB did not address an alternate ground for denying the motion to amend, and the Federal Circuit vacated and remanded the PTAB’s decision for further proceedings to address this matter. Id.

On remand, the parties disagreed about the scope of the issues for the PTAB to address on remand. See Array BioPharma Inc. v. Takeda Pharm. Co., IPR2015-00754, Paper 75, at 3 (P.T.A.B. March 28, 2018). Takeda argued that by vacating the entire Final Written Decision, the Federal Circuit was suggesting that the full motion to amend should be revisited in the wake of Aqua Products v. Matal.[1] Id.  Takeda sought to brief how Aqua Products affects Takeda’s burden of persuasion with respect to the proposed substitute claims 26-29. Id. Takeda also requested that the PTAB extend such briefing to include discussion of Aqua Products as it applies to the motion to amend as a whole, beyond the appealed proposed substitute claims 26-29 (substitute claims 18-29 were originally proposed). Id. at 3-4. Finally, Takeda sought, in the alternative, authorization to file a new motion to amend to present alternative claims that Takeda argued it would have presented had it not been faced with the burden of persuasion to show patentability. Id. at 4.

The Petitioner, Array Biopharma Inc., asserted that the Federal Circuit’s decision only identified an error regarding claim dependency, and that the Federal Circuit did not address any substance, error, or change in law regarding Aqua Products that would necessitate further briefing. Id.

The PTAB relied on a recent USPTO memorandum in view of Aqua Products to authorize the parties to submit limited briefing on how Aqua Products impacts the review of Takeda’s contingent motion to amend with respect to appealed claims 26-29. Id. at 5-6. However, the PTAB declined to authorize any briefing on matters related to the contingent motion to amend as a whole or a new motion to amend. Id. at 6. The PTAB reasoned that the decision on remand need only address and correct the specific matter for which the Federal Circuit vacated and remanded the Final Written Decision to the PTAB, that is, consideration of the contingent motion to amend with respect to proposed substitute claims 26-29. Id.

[1] In Aqua Products Inc. v. Matal, 872 F.3d 1290 (Fed. Cir. 2017), the Federal Circuit sitting en banc overturned the PTAB’s implementation of the IPR statutory provision allowing patent owners to file motions to amend by requiring patent owners to demonstrate the patentability of the amended claims.  The Federal Circuit held that the burden of persuasion properly rests on the petitioner and not on the patent owner.


DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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