The full U.S. Court of Appeals for the Federal Circuit held in Aqua Products “the burden of proving the unpatentability of all claims in an IPR—both original and amended—is on the petitioner.” Five opinions (including one dissent written by Judge Hughes) were filed by the full bench, and the lead opinion written by Judge O’Malley overruled four prior Federal Circuit decisions to the extent those cases were inconsistent with the en banc holding. The main question presented and answered in the decision was whether the PTO could require a patent owner to bear the burden of persuasion or production with respect to the patentability of amended claims as a condition for the allowance of those claims in IPR.

The full Federal Circuit held that an IPR petitioner “bears the burden to prove all propositions of unpatentability.” In reaching this conclusion, the Federal Circuit considered the literal text of 35 U.S.C. § 316(e), the overall statutory scheme of the America Invents Act, its legislative history, and whether the holding was consistent with the language and purpose of § 316(d). The opinion noted that under § 316(d) the “‘request’ made by a motion to amend challenged claims is—in the PTO’s own words—for ‘entry’ into the IPR, not for entry of an amended claim into the patent.” Slip. op. at 21 (emphasis in original).

According to the Federal Circuit’s decision, if a petitioner chooses to contest an amended claim in IPR, the Board is “free to reopen the record to allow admission of any relevant prior art proffered by petitioner or to order additional briefing on any issue involved.” The Federal Circuit observed that the PTAB has granted only eight motions to amend in post-issuance proceedings. This en banc decision will likely result in more motions to amend filed by patent owners in IPR, increase the amount of briefing required in affected proceedings, and likely increase the rate at which motions to amend are ultimately granted.

Aqua Products v. Matal, Case No. 15-1177 (Fed. Cir. Oct. 4, 2017) (en banc).