In ZyXEL Communications v. Unm Rainforest Innovations, the Federal Circuit, in a precedential opinion, clarified the MTA Pilot Program, which is designed to allow reply briefs to address and correct errors. It was not error, or at worst, harmless error, for the Board to permit UNMRI to use its reply brief to supplement the written description support that should have been, but was not, included in its original motion to amend.
Read more
37 C.F.R. § 42.121(b): A motion to amend claims must include a claim listing . . . and set forth: (1) The support in the original disclosure of the patent for each claim that is added or amended; and (2) The support in an earlier-filed disclosure for each claim for which benefit of the filing date of the earlier filed disclosure is sought.
“The MTA [motion to amend] Pilot Program introduced the option for patent owners to receive preliminary guidance from the Board with respect to motions to amend. To be sure, the MTA Pilot Program did not eliminate requirements as to contents of the original motion or the limitations on reply briefs. [. . .] It thus appears that the MTA Pilot Program is designed to allow reply briefs to address and correct errors. We do not think the Board erred in permitting UNMRI to use its reply brief to supplement the written description support that should have been, but was not, included in its original motion to amend.”
“Even if allowing the reply brief to supply the missing information had been inconsistent with the regulation, we conclude that any error was harmless error . . . because ZyXEL was not prejudiced by the Board's decision to allow the reply brief to supplement the initial motion. [While] ZyXEL asserts . . . that it had no opportunity to present any expert declarations to refute UNMRI's new arguments[,] . . . ZyXEL never made any request to the Board to waive its rules and permit it to file an expert declaration. [. . .] Second, ZyXEL does not . . . point to any relevant evidence that it would have presented if the opportunity had been available.”