On February 5, 2018, the PTO filed a petition for rehearing of Bosch Auto. Serv. Sol’ns, LLC v. Matal, 878 F.3d 1027 (Fed. Cir., Dec. 22, 2017). The petition asks the panel “not . . . to alter its judgment, but only to clarify a sentence in its precedential opinion that could give rise to needless misunderstandings in the future.” The sentence at issue relates to the panel’s characterization of the Court’s en banc holding in Aqua Products, Inc. v. Matal, 872 F.3d 1290 (Fed. Cir., Oct. 4, 2017). Specifically, the panel stated that, “this Court [in Aqua Products] recently ruled that the patent owner does not bear the burden of proof on the patentability of its proposed amended claims. Rather, the petitioner bears the burden of proving that the proposed amended claims are unpatentable ‘by a preponderance of the evidence.’ 35 U.S.C. § 316(e).” In its rehearing petition, the PTO argues that a majority of judges in Aqua Products (Prost, Dyk, Reyna, Taranto, Chen, and Hughes) found that § 316(e) is ambiguous as to the burden of persuasion for amended claims, and thus the second, italicized, sentence in the quoted language incorrectly suggests that § 316(e) unambiguously places the burden on the petitioner.

To understand the PTO’s argument, it is helpful to briefly revisit Aqua Products. There, the en banc Federal Circuit “consider[ed] the proper allocation of the burden of proof when amended claims are proffered during inter partes review proceedings[]” and ultimately arrived at five separate opinions—none of which garnered a majority. According to the lead opinion, 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 to deference, the PTO may not place that burden on the patentee.” The PTO’s subsequent Guidance on Motions to Amend in view of Aqua Products explained that, in response to that decision, “the Board will not place the burden of persuasion on a patent owner with respect to the patentability of substitute claims.”

In Bosch, the Federal Circuit vacated the PTAB’s rejection of Bosch’s amended claims, because the PTAB had “impermissibly assigned the burden of proof on the issue of indefiniteness to [patent owner] Bosch.” As noted above, the panel cited 35 U.S.C. § 316(e) after its statement that “the petitioner bears the burden of proving that the proposed amended claims are unpatentable ‘by a preponderance of the evidence.’” The PTO argued that this sentence could be interpreted to mean that § 316(e) imposes the burden of proof on the petitioner, when “a majority of judges [in Aqua Products]…found…§ 316(e) is ambiguous as to the burden of persuasion for amended claims.” The PTO’s request, therefore, seeks to clarify that the “burden assignment results from the current state of the law, not from the language of § 316.” The PTO thus urges the Court to revise the challenged sentence to eliminate the reference to § 316(e).

Notably, the PTO also pointed out that, although Aqua Products found that the “current landscape” does not allow the PTO to “place the burden of persuasion with respect to patentability of amended claims on the patentee[,]” the decision “recognizes” the possibility of the PTO doing so “in the future.” In other words, “the panel’s reading of Aqua Products could leave the mistaken impression that the panel foreclosed what Aqua Products expressly left open.” This statement may be an indication that the PTO is considering undertaking measures to formally place the burden on patentees, for example, through formal rulemaking. Thus, while the PTO’s Guidance in the immediate wake of Aqua Products explained that it would not place the burden on patentee, it is possible that the PTO could adopt a different approach in the future and does not wish to be hamstrung in those efforts by what it believes is an incorrect characterization of Aqua Products by the Bosch panel. It will be interesting to follow this development and the USPTO’s efforts, if any, to return the burden on amended claims to the patent owner.