January 19, 2021

Volume XI, Number 19


January 18, 2021

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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.

©1994-2020 Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C. All Rights Reserved.National Law Review, Volume VII, Number 278



About this Author

Michael Renaud IP Litgation Attorney Mintz Levin
Member / Chair, Intellectual Property Division

Michael is a highly regarded intellectual property litigator and patent strategist who helps clients protect and generate revenue from their patent holdings. Intellectual Asset Magazine has repeatedly recognized him in its select IAM Patent 1000 and IAM Patent Strategy 300 publications. Clients rely on his counsel regarding sensitive licensing agreement negotiations, acquisitions, and other technology transactions. He leads a team known for its ability to translate complex technology and its value to non-technical professionals — in court and business negotiations.

Michael is...

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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.

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Michael C. Newman, Intellectual Property Attorney, Mintz Levin,Patent Litigation Federal Circuit Appeals International Trade Commission Federal District Court Strategic IP Monetization & Licensing

Michael represents companies in complex intellectual property disputes, with a particular focus on Section 337 investigations before the US International Trade Commission (ITC). His experience spans from pre-litigation investigation and litigation, to appeals before the Court of Appeals for the Federal Circuit. In addition, Michael has had extraordinary success representing patent owners in inter partes review proceedings before the Patent Trial and Appeals Board (PTAB).

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Matt focuses his intellectual property practice on patent litigation, strategic IP counseling, and patent valuation.  He has experience representing clients before the International Trade Commission (ITC), Federal district courts, and the Patent Trial and Appeal Board.  Matt’s practice covers complex technologies such as microprocessors, graphics processors, RF circuitry, LCD display systems, microelectromechanical systems, audio and video processing, VLSI design, consumer telecommunications systems, and DDR-compliant memory modules and DRAM.

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