The Patent Trial and Appeal Board has issued its Guidance on Motions to Amend in view of the Federal Circuit’s long-awaited Aqua Products decision. In that splintered ruling, the Federal Circuit addressed the burden of proof as to the patentability of substitute claims presented by a patent owner in a motion to amend during inter partes review. As lamented in Federal Circuit Chief Judge O’Malley’s lead opinion, “very little said over the course of the many pages that form the five opinions in this case has precedential weight.” Aqua Products, Inc. v. Matal, 872 F.3d 1290, 1327 (Fed. Cir. 2017). Indeed:

The only legal conclusions that support and define the judgment of the court are: (1) the PTO has not adopted a rule placing the burden of persuasion with respect to the patentability of amended claims on the patent owner that is entitled to deference; and (2) in the absence of anything that might be entitled deference, the PTO may not place that burden on the patentee.

Id (emphasis added). In its new Guidance, the PTAB thus does not place the burden of persuasion with respect to amendment patentability on a patent owner, but it notably does not go so far as to affirmatively place the burden on Petitioner. So who bears the burden?

The Guidance states the PTAB itself will “determine whether…substitute claims are unpatentable by a preponderance of the evidence based on the entirety of the record, including any opposition made by petitioner.” See Guidance at 2. The PTAB has placed the burden on itself. This approach can be seen as consistent with the PTO’s approach to examination of any new claim in original prosecution. Moreover in IPR, placing the burden on petitioner could place the PTAB in the position of granting amended claims simply because petitioner failed to present a persuasive case of unpatentability. The approach similarly allows for the possibility that a petitioner may drop entirely out of an IPR or appeal—as was the case with the petitioner in Aqua Products—leaving just the PTAB to determine the patentability of a patentee’s preferred amendment.

In the ten weeks since the Aqua Products decision, the PTAB has started to address motion-to-amend practice in pending IPRs. Thus far, the Board has denied a patent owner the opportunity to file a motion to amend after a final decision had been rendered (IPR2016-00622, Paper 50), but it has authorized additional briefing by both parties just prior to oral hearing (IPR2016-01589, Paper 41), and authorized additional briefing accompanied by expert testimony prior to oral hearing (IPR2017-00037, Paper 21). The trend is thus emerging that the PTAB will allow additional briefing in pending IPRs in light of Aqua Products by parties, so long as oral hearing and a final decision have not been rendered.

The Aqua Products decision applies not only to pending IPRs, but also to those that were appealed to the Federal Circuit for review of decisions regarding motions to amend. In such cases, the Federal Circuit has remanded to the PTAB for consideration in view of its Aqua Products decision. For such cases, both the Guidance discussed herein and the PTAB’s new Standard Operating Procedure 9 for remands will apply.

The PTAB has thus sought to navigate the complexities of the Federal Circuit’s Aqua Products decision. Other than the PTAB taking on the burden of amendment patentability, its Guidance posits “generally speaking, practice and procedure before the Board will not change.” It remains to be seen if amendments—which had been infrequent prior to Aqua Products—pick up, and ultimately whether the Federal Circuit will bless the Board’s new approach.

Kilpatrick Townsend is at the leading edge of this next era of amendment practice before the PTAB, including representation of petitioners ScentAir and adidas in IPR No. 2013-00179 (ScentAir Technologies, Inc. v. Prolitec, Inc.) and IPR No. 2013-00067 (adidas AG v. Nike, Inc) on remand from the Federal Circuit in the wake of Aqua Products.