09 October 2017
Washington DC
Reporter: Barney Dixon

Burden of amended claims falls to petitioner, says Federal Circuit

The burden of persuasion should not be placed on patent owners when they seek to amend claims in inter partes review (IPR), according to a ruling from the US Court of Appeals for the Federal Circuit.

In its decision in the Aqua Products’s case against the US Patent and Trademark Office (USPTO), the Federal Circuit concluded that USPTO is not justified in placing the burden of persuasion on patent owners when they seek to amend claims in IPR.

At the USPTO’s Patent Trial and Appeal Board (PTAB), Aqua was denied a motion to amend various claims of one of its patents during an IPR.

Aqua challenged the USPTO rules on appeal, arguing the proper allocation of burden of proof when amended claims are given in IPR proceedings.

The Federal Circuit vacated the PTAB’s decision “insofar as it denied the patent owner’s motion to amend the patent”.

The case was remanded to the PTAB for a final decision assessing the patentability of Aqua’s proposed substitute claims, without placing the burden of proof on Aqua.

This practice must also be applied to all pending IPRs at the USPTO until the director of the USPTO “engages in notice and comment rulemaking”.

The majority opinion stated: “At that point, the court will be tasked with determining any practice so adopted is valid.”

Seven of the 11 judges sitting en banc issued the narrow ruling, alongside a concurring opinion, two opinions that join the decision in part and a dissenting opinion.

Judge Kathleen O’Malley, writing for the majority, recognised that deciding the case had not been easy.

She said: “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.”

She stated that there were only two legal conclusions that support the majority ruling: first, the USPTO 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.

Secondly, in the absence of entitled deference, the USPTO may not place that burden on the patentee.

Commenting on the ruling, Michael Weiner, partner at Marshall, Gerstein & Borun, explained: “The decision creates a real mess for the PTAB because it affects all pending IPRs.”

Weiner said: “The PTAB will need to establish procedures and likely issue new rules to address the court’s decision, and will probably need to use its authority to extend its deadlines for pending IPRs.”

Justin Oliver, partner at Fitzpatrick, Cella, Harper & Scinto, added: “With the Federal Circuit's decision, it appears that petitioners will bear the burden of proof for providing patentability of amended claims in IPR proceedings. This is a significant shift.”

Cyrus Morton, partner and chair of the patent office trials group at Robins Kaplan, suggested this shift in burden is “obviously good for patent owners, who often feel they need all the help they can get to survive an IPR.”

But Oliver commented: “The manner in which the Federal Circuit reached that decision leaves the door open for the USPTO to issue new regulations that shift the burden back to the patent owner.”

“Whether the USPTO will do so, and whether such new regulations would withstand scrutiny in a future appeal, remain open questions.”

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