Earlier this month the Federal Circuit granted en banc review of the PTAB’s process for reviewing Motions to Amend Claims in AIA proceedings. In the case In re Aqua Products, the patent owner argues that it met the statutory requirements for making a claim amendment but the PTAB failed to enter the amendment based on a erroneous interpretation of the statute which results in additional, onerous requirements being levied on a patent owner.

The statute in question is 35 U.S.C. § 316(d)(3), which requires that a claim amendment (1) not enlarge the scope of the claims and (2) not introduce new matter. In implementing this portion of the statute, the PTAB has held that a patent owner, as movant, must demonstrate that the amended claims are not invalid. See, e.g., Idle Free Sys., Inc. v. Bergstrom, Inc., IPR2012-00027, Paper 26 (PTAB June 11, 2013). In other words, the patent owner must prove that the amended claims are patentable over all prior art known to the patent owner. Aqua Products will have an opportunity to argue to the full Federal Circuit that this requirement exceeds the unambiguous conditions outlined in § 316(d)(3) for entering a claim amendment.

Patent owner Aqua Products additionally argues that the PTAB’s procedure for reviewing proposed amendments conflicts with 35 U.S.C. § 316(e), which provides that “the petitioner shall have the burden of proving a proposition of unpatentability by a preponderance of the evidence.” Under PTAB practice, a patent owner filing a motion to amend claims has the burden of making out a prima facie case of patentability for the amended claims. If this burden is met, the petition has an opportunity to rebut the patentability of the amended claims by introducing new evidence and arguments against those claims. MasterImage 3D, Inc. v. RealD, Inc., IPR2015-00040, Paper 42 (PTAB July 15, 2015). Aqua Products will argue that the shifting burdens of proof used by the PTAB should be abandoned because it conflicts with their reading of § 316(e) which requires the burden of proof to always remain with a petitioner.

If the Federal Circuit affirms the PTAB’s current process for reviewing motions to amend claims in AIA reviews, then claim amendments will likely remain difficult to come by. However, if the Federal Circuit agrees with Aqua Products on any of the issues raised in this case they will likely make it easier for patent owners to amend claims.

Looking beyond In re Aqua Products, the PTAB continues to face criticism for the difficulty of amending claims during AIA reviews. The PTAB’s own study, released in April of this year, showed just six successful motions to amend claims out of 118 attempts. The lack of successful amendments, as well as the Federal Circuit’s review, may put the PTAB on the lookout for acceptable amendments or may make the PTAB search for new procedural changes which lessen the burden on patent owners seeking to amend claims.