January 21, 2019

AQUA PRODUCTS: The Federal Circuit Shifts The Burden of Proof On Amending Claims During An IPR From The Patent Owner To The Petitioner

The United States Court of Appeals for the Federal Circuit’s recent decision in Aqua Products Inc., v. Matal materially changes the burden of proof associated with the patentability of amended claims during an inter partes review (“IPR”), shifting the burden from the Patent Owner seeking the amendment to the IPR Petitioner opposing it.

Prior to the Aqua decision, if a Patent Owner sought to amend claims during an IPR, the Patent Trial and Appeals Board (the “Board”) placed the burden on the Patent Owner to prove that the proposed amended claims were patentable.  When Patent Owner Aqua attempted to amend its claims during an IPR challenge to its U.S. Patent No. 8,273,183, the Board found that Aqua had not met its burden and denied Aqua’s motion to amend.

On appeal, the Federal Circuit initially “upheld the Board’s approach of allocating to the patentee the burden of showing that its proposed amendments would overcome the art of record.”  Aqua petitioned the Board’s decision for en banc rehearing, which was granted.

The controlling question faced and answered by the Federal Circuit in its en banc rehearing was which party bears the burden of establishing patentability of amended claims in an IPR: Patent Owner or Petitioner?  According to the Director of the USPTO and the Board, the burden properly belonged on the Patent Owner pursuant to 37 C.F.R. § 42.20, a regulation promulgated by the Director to govern all motion practice before the Board, requiring that “[t]he moving party has the burden of proof to establish that it is entitled to the requested relief.”

However, the Federal Circuit disagreed, determining that “Congress explicitly placed the burden of persuasion to prove propositions of unpatentability on the petitioner for all claims, including amended claims.” As a safeguard against issuance of “untested” amended claims, the Federal Circuit noted that proposed amended claims must be narrower in scope and cannot add new matter.  As a result, the amended claims are necessarily subjected to the same earlier examination the original claim faced and are reassessed to determine whether they are supported by the patent’s written description.

In applying its final written decision to Aqua’s en banc appeal, the Federal Circuit vacated and remanded the Board’s original decision insofar as it denied the Patent Owner’s motion to amend claims.  Further, the matter was remanded for the Board to issue a final decision assessing the patentability of the proposed substitute claims without placing the burden of persuasion on the patent owner.  Importantly, the Federal Circuit also stipulated that the Board must follow this same practice in all pending IPRs unless and until the Director engages in notice and comment rulemaking regarding the correct burden on this issue.

It remains to be seen how the Director (or the Supreme Court) will respond to the Federal Circuit’s Aqua decision.  At least for now, the Board can no longer place the burden of establishing the patentability of amended claims in an IPR on the Patent Owner.  As such, this decision has the potential to be the most significant change to IPR proceedings since their statutory institution.  If the Director and the Board embrace a liberal amendment process in adherence with this decision, it is a brave new world for IPR proceedings where Petitioner risk could substantially increase.

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About this Author

Michael T. Renaud, IP Litigation Attorney, Mintz Levin Law Firm

Michael’s practice is focused on patent litigation and also includes licensing, patents, copyrights, trademarks or trade secrets, and other intellectual property matters. His work in patent litigation primarily involves technologies such as electromechanical systems, digital cameras, embedded microprocessors, telecommunications and network software, cellular phones, and e-commerce, among others. Michael has also advised clients in regards to patent portfolios and IP diligence, and has counseled venture capital funds on their IP assets and patent value.

Michael rejoins Mintz Levin...

William A. Meunier, Mintz Levin, Patent Litigation Lawyer, Biotech Attorney

Bill focuses his practice on all aspects of intellectual property litigation, with a particular emphasis on patent infringement matters and other disputes related to the enforcement of intellectual property rights. He has litigated intellectual property cases in District Courts throughout the United States, including the Eastern District of Virginia, Northern and Southern Districts of California, Eastern District of Texas, District of Massachusetts, District of Delaware, Northern District of Ohio, and Middle District of North Carolina.

With more than 18 years of experience, Bill counsels clients in all phases of patent litigation, from initial counseling through trial and appeal. He has extensive experience leading litigation teams to resolve patent infringement disputes in a diverse array of technology areas such as internet services and systems; computer hardware and software; mobile systems and applications; medical devices and services; biotechnology; mechanical devices and manufacturing; sports equipment; and toys and novelties. In addition, his practice encompasses representing clients in cases involving copyrights, trademarks, trade secrets, unfair competition, and patent-related antitrust issues.

Michael C. Newman, Intellectual Property Attorney, Mintz Levin, Law firm

Michael's practice is focused on his work with the US International Trade Commission (USITC).  His cases in federal courts also include patents, trade secrets, and other intellectual property matters. The areas of technology in which Michael has particular experience include biochemistry, biotechnology, chemistry, computer software, mechanical devices, medical devices, semiconductors, and converged devices.

Before joining Mintz Levin, Michael worked with the law firms Pepper Hamilton LLP and Fish & Richardson PC. He has also worked as a software engineer and has conducted...

Matthew S. Galica, Mintz Levin, Technology Specialist, Software Development lawyer, Application architect, Attorney
Technology Specialist

Matthew’s work is focused on enterprise-level data management and software development. He has worked with clients including Fresenius Medical Care, Raytheon, Bose, Jabil Circuits, and CAT Global Mining.

Before joining Mintz Levin, Matthew was a technology consultant and application architect for a technology corporation in the Boston area. There, he configured and implemented software and worked with product and business development teams. He has previously worked as an intern with a power company, where his efforts were focused on the use of...