On August 12, 2016, the Federal Circuit granted the petition for rehearing filed in In re Aqua Products Inc. and decided that its full panel of judges will consider the PTAB’s current practice for allowing (or, in most cases, not allowing) claim amendments.

Amendments in PTAB proceedings are currently guided by the Informative Opinion issued in Idle Free Systems, Inc. v. Bergstrom, Inc. IPR2012-00027 (PTAB June 11, 2013), which places theburdenon patent owners to demonstrate that a proposed claim is patentably distinct over the prior art of record and other prior art known to the patent owner. The Federal Circuit has upheld this practice and the original panel in the now-vacated decision of In re Aqua Products Inc., 823 F.3d 1369 (Fed. Cir. 2016) affirmed the PTAB decision noting that they were bound by this precedent.

In its order granting the petition for rehearing en banc, the Federal Circuit requested supplemental briefing on the following questions:

(a) When the patent owner moves to amend its claims under 35 U.S.C. § 316(d), may the PTO require the patent owner to bear the burden of persuasion, or a burden of production, regarding patentability of the amended claims as a condition of allowing them? Which burdens are permitted under 35 U.S.C. § 316(e)?

(b) When the petitioner does not challenge the patentability of a proposed amended claim, or the Board thinks the challenge is inadequate, may the Board sua sponte raise patentability challenges to such a claim? If so, where would the burden of persuasion, or a burden of production, lie?

Oral argument in this case is scheduled for December 9, 2016.