Just in case you needed another reason to avoid filing a Motion to Amend in your IPR, consider this.
Motions to Amend Claims in PTAB proceedings have lost much of their early popularity as their success rate remains dismally low. Only four Motions to Amend have been granted in the history of AIA proceedings (read ’em: one, two, three, four). I’m not counting motions to cancel claims, only to substitute. Patent Owners perhaps have realized that it’s much easier to pursue back-up claim positions through ex parte examination of continuation and divisional applications if available. Plus it’s clear that claims amended through IPR are subjet to intervening rights. 35 U.S.C. § 318(c).
And now there’s another reason to avoid a Motion to Amend: it fuels the Petitioner’s attempt to delay related infringement litigation. In Wonderland Nurserygoods Co., Ltd. v. Thorley Industries, LLC, the district court did not actually stay the litigation, but it removed the case from the trial calendar due to Wonderland’s motion to amend in a related IPR. The court was persuaded that the claim amendments the Patent Owner had proposed would, if successful, necessitate a second trial. The court put the scheduled trial on hold to allow the parties an opportunity to brief the issue and propose a new trial schedule.
Patent Owners contemplating a Motion to Amend should take this risk into account. Often a Motion to Amend is attempted in the hopes of obtaining a viable claim from the process. But if possible, consider excluding one or more asserted claims from the proposed amendment. That way, there is a credible argument that not all issues in the litigation are contingent on the result of the motion to amend, and that judicial economy does not require a trial delay.