15540 Federal Register / Vol. 89, No. 43 / Monday, March 4, 2024 / Proposed Rules 

filing a motion to amend in paragraph 

(a)(1)(i) of this section. 

(d) Burden of persuasion. On any 

motion to amend: 

(1) Patent owner’s burden. A patent 

owner bears the burden of persuasion to 

show, by a preponderance of the 

evidence, that the motion to amend 

complies with the requirements of 

paragraphs (1) and (3) of 35 U.S.C. 

326(d), as well as paragraphs (a)(2) and 

(3) and (b)(1) and (2) of this section; 

(2) Petitioner’s burden. A petitioner 

bears the burden of persuasion to show, 

by a preponderance of the evidence, that 

any proposed substitute claims are 

unpatentable; and 

(3) Exercise of Board discretion. 

Irrespective of paragraphs (d)(1) and (2) 

of this section, the Board may exercise 

its discretion to grant or deny a motion 

to amend or raise a new ground of 

unpatentability in connection with a 

proposed substitute claim. Where the 

Board exercises its discretion to raise a 

new ground of unpatentability in 

connection with a proposed substitute 

claim, the parties will have notice and 

an opportunity to respond. In the 

exercise of discretion under this 

paragraph (d)(3), the Board may 

consider all evidence of record in the 

proceeding. The Board also may 

consider and may make of record: 

(i) Any evidence in a related 

proceeding before the Office and 

evidence that a district court can 

judicially notice; and 

(ii) When no petitioner opposes or all 

petitioners cease to oppose a motion to 

amend, prior art identified through a 

prior art search conducted by the Office 

at the Board’s request. A request for and 

result of a prior art search conducted by 

the Office at the Board’s request will be 

made of record. 

(4) Determination of unpatentability. 

Where the Board exercises its discretion 

under paragraph (d)(3) of this section, 

the Board must determine 

unpatentability based on a 

preponderance of the evidence of record 

or made of record. 

(e) Preliminary guidance. (1) In its 

original motion to amend, a patent 

owner may request that the Board 

provide preliminary guidance setting 

forth the Board’s initial, preliminary 

views on the original motion to amend, 

including whether the parties have 

shown a reasonable likelihood of 

meeting their respective burdens of 

persuasion as set forth under paragraphs 

(d)(1) and (2) of this section and notice 

of any new ground of unpatentability 

discretionarily raised by the Board 

under paragraph (d)(3) of this section. 

The Board may, upon issuing the 

preliminary guidance, determine 

whether to extend the final written 

decision more than one year from the 

date a trial is instituted in accordance 

with § 42.200(c) and whether to extend 

any remaining deadlines under 

§ 42.5(c)(2). 

(2) Any preliminary guidance 

provided by the Board on an original 

motion to amend will not be binding on 

the Board in any subsequent decision in 

the proceeding, is not a ‘‘decision’’ 

under § 42.71(d) that may be the subject 

of a request for rehearing, and is not a 

final agency action. 

(3) In response to the Board’s 

preliminary guidance, a patent owner 

may file a reply to the petitioner’s 

opposition to the motion to amend, 

preliminary guidance (no opposition is 

filed), or a revised motion to amend as 

discussed in paragraph (f) of this 

section. The reply or revised motion to 

amend may be accompanied by new 

evidence. If a patent owner does not file 

either a reply or a revised motion to 

amend after receiving preliminary 

guidance from the Board, the petitioner 

may file a reply to the preliminary 

guidance, but such a reply may only 

respond to the preliminary guidance 

and may not be accompanied by new 

evidence. If the petitioner files a reply 

in this context, a patent owner may file 

a sur-reply, but that sur-reply may only 

respond to the petitioner’s reply and 

may not be accompanied by new 

evidence. 

(f) Revised motion to amend. (1) 

Irrespective of paragraph (c) of this 

section, a patent owner may, without 

prior authorization from the Board, file 

one revised motion to amend after 

receiving an opposition to the original 

motion to amend or after receiving the 

Board’s preliminary guidance. The 

Board may, upon receiving the revised 

motion to amend, determine whether to 

extend the final written decision more 

than one year from the date a trial is 

instituted in accordance with 

§ 42.200(c) and whether to extend any 

remaining deadlines under § 42.5(c)(2). 

(2) A revised motion to amend must 

be responsive to issues raised in the 

preliminary guidance, if requested, or in 

the petitioner’s opposition to the motion 

to amend, and must include one or more 

new proposed substitute claims in place 

of the previously presented substitute 

claims, where each new proposed 

substitute claim presents a new claim 

amendment. 

(3) If a patent owner files a revised 

motion to amend, that revised motion to 

amend replaces the original motion to 

amend in the proceeding. 

Katherine K. Vidal, 

Under Secretary of Commerce for Intellectual 

Property and Director of the United States 

Patent and Trademark Office. 

[FR Doc. 2024–04127 Filed 3–1–24; 8:45 am] 

BILLING CODE 3510–16–P 

FEDERAL COMMUNICATIONS 

COMMISSION 

47 CFR Part 15 

[ET Docket No. 18–295 and GN Docket No. 

17–183; FCC 23–86; FR ID 192755] 

Unlicensed Use of the 6 GHz Band; 

and Expanding Flexible Use in MidBand Spectrum Between 3.7 and 24 

GHz; Correction 

AGENCY: Federal Communications 

Commission. 

ACTION: Proposed rule; correction. 

SUMMARY: The Federal Communications 

Commission is correcting the docket 

numbers for commenters under the 

preamble section titled, ADDRESSES, of 

the proposed rule that appeared in the 

Federal Register on February 26, 2024. 

FOR FURTHER INFORMATION CONTACT: 

Nicholas Oros of the Office of 

Engineering and Technology, at 

Nicholas.Oros@fcc.gov or 202–418– 

0636. 

SUPPLEMENTARY INFORMATION: 

Correction 

In FR Doc. 2023–28620 in the Federal 

Register of February 26, 2024, the 

following correction is made: On page 

14016 in the first column and first 

sentence in ADDRESSES of the preamble, 

‘‘ET Docket No. 13–115 and RM–11341’’ 

is corrected to read ‘‘ET Docket No. 18– 

295 and GN Docket No. 17–183’’. 

Federal Communications Commission. 

Marlene Dortch, 

Secretary. 

[FR Doc. 2024–04494 Filed 3–1–24; 8:45 am] 

BILLING CODE 6712–01–P 


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