This expectation was founded in the statutory language and past practice. The AIA states in Section 316(d)(1) of the Patent Act, 35 U.S.C.A. § 316(d)(1), that “the patent owner may file one motion to amend the patent.” Furthermore, IPR and post-grant review proceedings were intended to replace inter partes re-examinations to review the patentability of patent claims.
Prior panels of the court have placed the burden of persuasion on the patent owner. The Federal Circuit granted en banc review to resolve two questions: (a) When the patent owner moves to amend its claims under 35 U.S.C. § 316(d), may the PTO require the patent owner to bear the burden of persuasion, or a burden of production, regarding patentability of the amended claims as a condition of allowing them? Which burdens are permitted under 35 U.S.C. § 316(e)? (b) When the petitioner does not challenge the patentability of a proposed amended claim, or the Board thinks the challenge is inadequate, may the Board sua sponte raise patentability challenges to such a claim?
Further, Aqua Products argued that the PTAB abused its discretion by denying the motion to amend without considering all of the new limitations and the objective indicia of non-obviousness. [14]The Federal Circuit observed that according to the America Invents Act, a patent holder may file a motion to amend during IPR under 35 U.S.C. § 316 provided the amendments do not enlarge the scope of the claims or introduce new subject matter. However, § 318 states that a final written decision must address any new claim “determined to be patentable.”
BackgroundThe AIA permits a patent owner to “file 1 motion to amend the patent” by “cancel[ing] any challenged patent claim” and “[f]or each challenged claim, propose a reasonable number of substitute claims.” 35 U.S.C. § 316(d). The language of this statutory provision does not expressly allocate a burden of persuasion on the patent owner.
66). In arriving at these legal conclusions, a majority of the Court also agreed that 35 U.S.C. § 316(d) and 37 C.F.R. § 42.121 place a default burden of production on the patentee, but that the statute is ambiguous as to the burden of persuasion on the patentee.
If the PTAB institutes trial, the patent owner has a statutory right to pursue at least one motion to amend. 35 U.S.C. § 316(d). Congress specified that in an instituted IPR, “the petitioner shall have the burden of proving a proposition of unpatentability by a preponderance of the evidence.”
As a result, the Chief Judge explained, the "practice and procedure before the Board will not change," except when the entirety of the evidence is in equipoise, in which case the motion to amend will now be granted. The guidance did make clear that a patent owner still must satisfy the requirements of 35 U.S.C. § 316(d) and 37 C.F.R. § 42.121.
Consequently, as the court noted, its judgment in Aqua Products, Inc. v. Matalwas narrow. Eleven judges participated in the Aqua appeal, which involved the interpretation of 35 U.S.C. §316(e): (e) Evidentiary standards. – In 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.
Aqua Products appealed the PTAB’s denial of the motion to amend.On appeal, a Federal Circuit panel upheld the PTAB’s assignment to the patent owner of the burden of persuasion on the patentability of proposed substitute claims, and concluded that the PTAB did not err in holding the proposed substitute claims unpatentable. Aqua Products sought an en banc rehearing to challenge the burden-of-persuasion assignment regarding proposed substitute claims as impermissible under 35 U.S.C. § 316(e). On August 12, 2016, the Federal Circuit vacated the panel’s decision and granted en banc review.
First, Petitioner argued that the PTAB has no jurisdiction to render a final decision on the remaining grounds (i.e., the previously non-instituted grounds) because the statutory period of one year (extendable to 18 months for good cause) has passed since the decision to institute the previously non-instituted grounds and the PTAB has yet to enter a final written decision. Id.; see also 35 U.S.C. § 316(a)(11). Second, the Petitioner argued that the Final Written Decision on the original institution should be vacated because (i) it “did not address all grounds raised by petitioner” as required by SAS, and (ii) “the Board can no longer issue a final determination addressing all ground raised in the petition as required by SAS.”