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CAFC Eases Amendment Process In IPR Proceedings

Today in Aqua Products, Inc. v. Matal, a fractured Court of Appeals for the Federal Circuit (CAFC) t sitting en banc decided to flip the burden of persuasion onto petitioners in IPR proceedings to show that an amendment is not patentable, removing from patent owners the burden previously placed upon them by the PTAB.  In its conclusion, the court states as follows:

“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 deference, the PTO may not place that burden on the patentee.”

Although the court relied in part on the “unambiguous” language of section 316(e) stating that, “[i]n an inter partes review instituted under this chapter, the petitioner shall have the burden of proving a proposition of unpatentability by a preponderance of the evidence,” it also cited to the legislative history in support of its decision, noting that “the PTO has more than once acknowledged that use of the broadest reasonable interpretation standard is only appropriate when patent owners have the opportunity to amend” and further pointing out how frequently the right to amend was invoked during the legislative history to justify applying broadest reasonable interpretation to the claim language.

In its remand instructions, the court stated as follows:

“The matter is remanded for the Board to issue a final decision under § 318(a) assessing the patentability of the proposed substitute claims without placing the burden of persuasion on the patent owner. The Board must follow this same practice in all pending IPRs unless and until the Director engages in notice and comment rulemaking.  At that point, the court will be tasked with determining whether any practice so adopted is valid.”

The court declined to answer the second question posed in its initial en banc order:  whether or not the Board is allowed to sua sponte raise an issue of unpatentability with respect to an amended claim.  On this question, the court decided to reserve judgment for another day because the record here does not present this precise question.

The CAFC issued one other decision recently aimed at loosening the PTAB’s restrictions on amendment:  Nike v. Adidas, which is discussed in our earlier posting “CAFC Partially Relaxes Idle Free Requirements for Amendments During IPR“.

While this decision is good news for patent owners, it may end up at the Supreme Court given the divided opinions of the Federal Circuit judges.  In its conclusion, the court candidly acknowledges the difficulty of reaching its decision:

“This process has not been easy.  We are proceeding without a full court, and those judges who are participating disagree over a host of issues. As frustrating as it is for all who put so much thought and effort into this matter, very little said over the course of the many pages that form the five opinions in this case has precedential weight.”

Furthermore, while it will be a procedural advantage for patent owners not to have to carry the burden of persuasion any more, petitioners still have a full menu of options for attacking patentability of an amended claim.  We will have to wait and see whether flipping the burden of persuasion will actually change the outcomes of motions to amend, which so far have had only around a 5% chance of success for patent owners.

© 2020 Foley & Lardner LLP


About this Author

Bradley Roush, Foley, Electromechanical Patent Litigation Attorney, Intellectual property Lawyer,

Bradley Roush is an associate and intellectual property lawyer with Foley & Lardner LLP where he focuses on electromechanical patent litigation. His experience includes various stages of U.S. district court litigations and International Trade Commission (ITC) Section 337 investigations. Technologies Mr. Roush has litigated include video display, computer software, narcotics and explosives detection, semiconductor materials, mobile phones, and hybrid automobiles. He is a member of the firm’s IP Litigation Practice.

Prior to joining Foley, Mr...

Stephen B. Maebius Foley Lardner Intellectual Property Lawyer

Stephen (Steve) B. Maebius is a partner and intellectual property lawyer with Foley & Lardner LLP. He has led teams within Foley handling a variety of different kinds of IP work, including IP due diligence reviews, infringement and validity opinions, international portfolio management, licensing, litigation with parallel inter partes reviews, reexaminations and interferences, and pharmaceutical patent term extensions. Two IP transactions in which Mr. Maebius has participated were awarded "Deal of Distinction" status by the Licensing Executives Society. He is a former member of the firm’s Management Committee and former chair of the Intellectual Property Department. Prior to becoming a lawyer, he was a patent examiner in the Biotechnology Group of the U.S. Patent & Trademark Office.

Representative Matters

  • Lead counsel in successful defense of 6 Inter Partes Reviews filed by generic petitioners against a family of Orange Book-listed pharmaceutical patents covering a $1B controlled release product with parallel Hatch-Waxman litigation (IPR2013-00368, IPR2013-00371, and IPR2013-00372 - instituted but all claims found patentable in final written decision; IPR2015-01777, IPR2015-01778, and IPR2015-01782 - not instituted)
  • Prosecuted product-by-process patent listed in Orange Book that was upheld as valid and infringed in United Therapeutics v. Sandoz, 2014 U.S. Dist. LEXIS 121573 (D.N.J. Aug. 29, 2014)
  • Co-counsel for successful petitioner in Inter Partes Review filed against patent asserted in litigation against LED client (IPR2012-00005; decision affirmed on appeal)
  • Takeda Pharmaceutical Co. Ltd. v. John Doll (Fed. Cir. 2009) – co-counsel in precedential 2-1 decision remanding a double patenting rejection arising from patent reexamination (all claims confirmed to be patentable upon remand to the Patent Office)
  • Goldenberg & Immunomedics v. Cytogen & C.R. Bard (Fed. Cir. 2004) – co-counsel on appeal in reversal of summary judgment in client's favor in precedential 2-1 decision on doctrine of equivalents issue