The PTAB’s Chief Administrative Patent Judge issued a memorandum on November 21, 2017, providing guidance on motions to amend in view of the en banc decision of the Federal Circuit in Aqua Products, Inc. v. Matal, 872 F.3d 1290 (Fed. Cir. 2017) (discussed here and here). The court in Aqua Prodsucts determined that the Board could not the place burden of persuasion with respect to the patentability of substitute claims on the patent owner. The memorandum stated that the Board will determine whether substitute claims submitted in a motion to amend compliant with 35 U.S.C. § 316(d) are unpatentable by a preponderance of the evidence based on the entirety of the record, including any opposition made by the petitioner.
The memorandum notes that other practices and procedures before the Board will not be changed, such as briefing and scheduling practices. In addition, the memo points to a number of requirements and duties that a patent owner must still fulfill with respect to motions to amend. For example, under 37 C.F.R. §§ 42.121 and 42.22, a patent owner must confer with the Board before filing a motion to amend. Additionally, a patent owner’s motion to amend must set forth written description support and support for the benefit of a filing date in relation to each substitute claim, and respond to grounds of unpatentability involved in the trial. Under 37 C.F.R. § 42.11, a patent owner has a duty to disclose to the Board information that the patent owner is aware of that is material to the patentability of substitute claims, if such information is not already of record in the case. In short, while the Board’s memorandum acknowledged that the burden of persuasion is not on the patent owner with respect to substitute claims, the Board took pains to discourage patent owners from thinking that having substitute claims reviewed by the Board would be a piece of cake.