On November 21, 2017, the PTAB issued guidance on motions to amend in view of the Federal Circuit’s en banc decision in Aqua Products, Inc. v. Matal, 872 F.3d 1290 (Fed. Cir. 2017).[i] The decision, a compilation of five separate opinions totaling 148 pages, left much to be analyzed and digested. However, as noted in the lead opinion, the case could be condensed down into a very narrow holding, with just a few sentences having precedential weight. Specifically, the Federal Circuit held that when considering the patentability of substitute claims presented in a motion to amend filed under 35 U.S.C. § 316(d) in an inter partes review proceeding (“IPR”) under the Leahy-Smith America Invents Act (“AIA”), “(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.”[ii]

In the recent guidance, the PTAB explains that in light of Aqua Products, the Board will no longer place the burden of persuasion on the patent owner to prove patentability of the proposed substitute claims. Instead, if a motion to amend meets the requirements of 35 U.S.C. § 316(d), the Board will determine patentability of the substitute claims based on a preponderance of the evidence of the entirety of the record, including any opposition made by the petitioner. This shift ultimately leaves the heavy lifting to the petitioner, on whom the burden must remain at all times during the proceeding, including demonstrating the unpatentability of amended claims.

The PTAB notes, however, that beyond this shift in burden of persuasion, the rules for motions to amend will remain unchanged. Therefore, a patent owner must still meet the requirements for a motion to amend under 37 C.F.R. § 42.121 or § 42.221, as applicable; a patent owner still has the duty to disclose to the Board any information that the patent owner is aware of that is material to the patentability of the substitute claims under 37 C.F.R. § 42.11; and a patent owner still must confer with the Board before filing a motion to amend. Those parties currently involved in a matter with a pending motion to amend that may be impacted by Aqua Products are invited to arrange a conference call with the Board to discuss.