In a final written decision, the Patent Trial and Appeal Board (PTAB) allowed a patent owner to amend one of the challenged claims. In a concurring opinion, Administrative Patent Judge (APJ) Fitzpatrick explained that the petitioner should have the burden of proof that amended claims are unpatentable. Taiwan Semiconductor Mfg. Co. Ltd. v. Godo Kaisha IP Bridge 1, Case No. IPR2016-01249 (PTAB, Dec. 20, 2017) (per curiam) (Fitzpatrick, APJ, concurring).

In 2016, Taiwan Semiconductor filed a petition to institute an inter partes review (IPR) of certain claims of a Godo Kaisha semiconductor patent. After the PTAB instituted the IPR, Godo Kaisha filed a motion to amend the claims by substituting three proposed claims for three of the challenged claims.

Typically, the PTAB denies a motion to amend if it proposes (1) an unreasonable number of substitute claims, (2) claims that are broader than the challenged claims to be replaced, (3) claims that introduce new matter, or (4) claims that are not responsive to a ground of invalidity in the IPR. In addition, the PTAB will review the substitute claims to determine if they are obvious or anticipated by the prior art. Prior to October 2017, the PTAB placed the burden of proof for each of these elements on the patent owner. The patent owner was required to prove that the substitute claims were appropriate (meeting the aforementioned four requirements), and that the substitute claims were not anticipated or obvious. In October 2017, however, the US Court of Appeals for the Federal Circuit issued its decision in Aqua Products v. Matal stating that the PTAB could not require the patentee to prove that the substitute claims were not anticipated or obvious.

Here, the majority decision noted the Federal Circuit’s Aqua Products ruling and reviewed the patentability of the substitute claims, finding that one of the three claims met the patentability requirements. The per curiam decision did not address the burden of proof applied to the patentability review, however. 

In a separate concurring opinion, APJ Fitzpatrick addressed the burden of proof, noting that according to the PTAB’s motion rules, the “moving party has the burden of proof to establish that it is entitled to the requested relief.” APJ Fitzpatrick reasoned that because the patent owner files a motion to amend the claims, the patent owner has the burden of production with respect to the requirements for a motion to amend—namely, (1) the substitute claims are reasonable in number, (2) the substitute claims are not broader than the original claims, (3) the substitute claims introduce no new matter, and (4) the substitute claims are responsive to a ground of unpatentability in the IPR. However, Fitzpatrick proposed that the petitioner, not the patent owner, would have the burden to raise and prove that the substitute claims are anticipated or obvious. Fitzpatrick believed that this approach would be consistent with the current IPR rules and with the Federal Circuit’s Aqua Products holding.