Amending Patents in PTAB Proceedings: Implications of Aqua Products

Since the AIA brought in the new post-grant proceedings, inter partes reviews (IPRs) and post-grant reviews (PGRs), the Patent Trial and Appeal Board (PTAB) has been very stingy about granting motions to amend proposing substitute claims. In Aqua Products v. Matal (Fed. Cir. Oct. 4, 2017), the Federal Circuit addressed the issue of amending claims in PTAB proceedings. Sitting en banc, the court, in a highly fractured 168-page decision with five separate opinions, discarded the U.S. PTO’s practice of placing the burden on patent owners of proving the patentability of proposed new claims.

Aqua Products appealed a PTAB IPR decision denying Aqua’s motion to amend for failure to show patentability of the proposed substitute claims. The en banc Federal Circuit vacated the PTAB decision, insofar as it denied the patent owner’s motion to amend, holding the statute did not impose a burden of persuasion on the patent owner to show patentability of proposed new claims. Nor is there a PTO rule placing that burden on the patent owner that is entitled to deference. The court remanded the matter to the Board for patentability determination without placing the burden of persuasion on the patent owner.

The availability of amending claims has been a key justification in the PTAB’s application of the broadest reasonable interpretation in post-grant proceedings. But the plurality opinion in Aqua Products called out previous Federal Circuit case law as overruled to the extent inconsistent with its opinion. It also rejected the PTO’s argument that PTAB decisions such as Idle Free and MasterImage addressed the burden to show patentability in the context of a motion to amend.

Listen as our authoritative panel of patent attorneys discusses how the post-grant proceeding landscape has been changed by Aqua Products, and in practical terms what practitioners should now consider relating to motions to amend proposing substitute claims. The panel will offer suggestions for tactics, whether representing patent owners as petitioners or patent owners defending challenged claims in the AIA post-grant proceedings. The panel will also discuss the PTAB guidance, released Nov. 21, 2017, offered on Aqua Products and motion to amend practice.

1. Aqua Products holdings, including all decisions rendered by a fractured en banc court
2. Federal Circuit and PTAB case law affected
3. Impact of granted substitute claim(s) on co-existing, pending litigation/USPTO proceedings
4. Intervening rights arising from granted substitute claims?
5. Consider prosecution options
   1. Consider including several claims with varying claim scope to minimize necessity of amendment
   2. Keep continuation application pending
6. What will be important to watch for in days ahead?
   1. USPTO efforts at proposed rule-making possibly explicitly placing the burden on the patent owner to show patentability of proposed substitute claim(s)
   2. Status of Chevron deference in light of pending U.S. Supreme Court treatment in SAS Institute Inc. v. Matal (cert. granted May 22, 2017)
   3. Constitutionality of AIA post-grant proceedings in light of pending Oil States Energy Services LLC v. Greene’s Energy Group LLC (cert. granted June 12, 2017) and developments in sovereign immunity cases
   4. Application of Aqua Products in PTAB

The panel will review these and other key issues:

• How could the Aqua Products decision affect patent owners’ ability get to amended claims granted?
• What practical considerations should counsel keep in mind related to motions to amend?
• What impact will this decision have on USPTO efforts at proposed rule-making possibly explicitly placing the burden on the patent owner to show patentability of proposed substitute claims?