First published in Law360

On August 12, 2016, the full Federal Circuit agreed to review the Patent Trial and Board's (PTAB) rules governing amendments to patents in America Invents Act (AIA) reviews. The decision came after Finnegan client Aqua Products, Inc. was granted a petition for en banc rehearing after the Federal Circuit previously upheld a PTAB decision in which Aqua was denied its request to amend its patent in an inter partes review.

Since AIA proceedings became available in 2012, patent owners have expressed frustration with how difficult it is to amend claims in AIA reviews. In April 2016, statistics showed that out of all requests to amend claims in AIA reviews, the United States Patent and Trademark Office (USPTO) had only granted six -- a 95% failure rate. According to Aqua, the high rate of denials is the result of what is believed to be a misinterpretation of a PTAB regulation which states that when a patent owner seeks to amend claims during an AIA proceeding, it has the burden of showing that the proposed new claims are patentable. Patent owners believe this practice produces unjust results.

Finnegan attorney James R. Barney said, "This case involves the important question of who bears the burden of proving patentability or unpatentability of an amended claim during an IPR. This issue goes to the heart of the overall balance that Congress struck between the rights of petitioners and patentees in an IPR." As Aqua Products understands the statute, an amendment that does not broaden the scope of the original claims or add new matter should be entered early in the proceedings. After that, the petitioner can then try to satisfy the burden of providing that the substitute claims are unpatentable. Barney said, "This is the scheme that Congress created, and the PTO does not have the power under the Constitution to modify that scheme for want of a different policy outcome."