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ARTICLE · 28 JULY 2023

Motion To Amend: Much To Admire?

Jones Day
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Motions to amend (MTA) are becoming a more frequently used tool for patent owners litigating before the Patent Trial and Appeal Board (PTAB). When a patent is being challenged...

United StatesIntellectual Property
Yang Li Ph.D. (Alex)
Yang Li Ph.D. (Alex)
Matthew Johnson
Matthew Johnson
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Motions to amend (MTA) are becoming a more frequently used tool for patent owners litigating before the Patent Trial and Appeal Board (PTAB). When a patent is being challenged in an inter partes review (IPR) or post-grant reviews (PGR) before the PTAB, the patent owner has the option of filing a motion to amend the patent's claims. Such MTAs, however, were rarely granted in the beginning years of the American Invents Acts. But over the past few years, the PTAB has enacted a MTA Pilot Program that favors patent owners' use of this procedure.

In Pelican Biothermal, LLC, v. VA-Q-Tec AG, IPR2021-00085, Paper 35 (June 16, 2023), the panel of judges ruled that only one Motion to Amend claim of the challenged patent was invalid, confirming the rest as not unpatentable. The patent-in-suit, U.S. Patent No. 10,766,685, was issued in 2020 and directed to a thermal-insulated shipping container for "temperature sensitive materials." At exactly nine months after the patent's

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