In Aqua Products, Inc., v. Matal, 2015-1177, Oct. 4, 2017, the en banc Federal Circuit cut against the grain of current PTAB proceeding and held that the petitioner in an inter partes review proceeding has the burden to prove unpatentability for amended claims.
The patent owner in a patent office trial may file one motion to amend the patent. See 35 U.S.C. 316(d), 326(d). However, the Patent Trial and Appeals Board had previously required the patent owner to prove that an amended claim is patentable. Last year, a panel of the Federal Circuit found that the Board was justified in placing the burden to establish patentability of proposed substitute claims on the patent owner because substitute claims have never been examined. See Nike, Inc. v. Adidas AG, 812 F.3d 1326 (Fed. Cir. 2016).
The Board has rarely granted requests to amend the claims. The Federal Circuit in Aqua Products noted that the only six of the first 118 motions to amend were granted. See Aqua Products at p. 12. In view of these low odds, many patent owners have chosen not to file motions to amend.
Six of the eleven judges that participated in the Aqua Products decision agreed that the petitioner in an inter partes review proceeding has the burden to prove unpatentability for amended claims. See Aqua Products, at page 5, opinion of the court by O’Malley, in which Newman, Lourie, Moore, and Wallach join. Dyk and Reyna, concurred in the result only. The judges agreed on little else.
Five of the eleven judges, O’Malley, Newman, Lourie, Moore, and Wallach, found that the statute “unambiguously requires the petitioner to prove all propositions of unpatentability, including for amended claims.” See Aqua Products at page 5. 35 U.S.C. § 316(e) recites:
(e) EVIDENTIARY STANDARDS.—In an inter partes review instituted under this chapter, the petitioner shall have the burden of proving a proposition of unpatentability by a preponderance of the evidence.
The five judges pointed to, among several other reasons, the fact that the 316(e) evidentiary standard “immediately follows the subsection discussing the requirements for amended claims in IPRs” (i.e., 35 U.S.C. 316(d)) to support their view that the statute is unambiguous as to the petitioner having the burden of proving unpatentability of amended claims. See Aqua Products at page 28.
The six other judges disagreed, finding that the statute was ambiguous. Four of these judges, Taranto, Prost, Chen, and Hughes, disagreed with the holding and would have found that Chevron deference allows the Director to decide that the burden of persuasion falls on the patent owner.
The other two judges, Dyk and Reyna, found that the statute was ambiguous, but believed that Chevron deference does not apply because the Board has not promulgated a regulation consistent with the Administrative Procedures Act. See Aqua Products, opinion by Reyna, joined by Dyk (also joined by Prost, Taranto, Chen, and Hughes as to Part III. only) at pages 8-11. The Board had not established that the burden of persuasion any regulation. Instead, the Board specified that the burden of persuasion is on the patent owner in dicta found in the Board’s Idle Free decision.
After the Aqua Products decision, patent owners may be more willing to file a motion to amend.