In re Aqua Products, Inc., Fed. Cir., No. 2015-1177, amicus brief filed 10/4/2016 October 4, 2016

The right of a patent owner to amend its patent claims in an inter partes review proceedings is improperly limited by the PTAB requirement that the patent owner bear the burden of persuasion that the amended claims are patentable, AIPLA argued to the en banc Federal Circuit in an amicus brief filed October 4, 2016.

The requirement conflicts with the required at 35 U.S.C. §316(e) that “the petitioner shall have the burden of proving a proposition of unpatentability by a preponderance of the evidence.” However, the PTAB properly imposes on a patentee a limited burden of production under 37 C.F.R. 41.121(a)(2) that the offered amendment “responds” to the ground of unpatentability, does not enlarge the scope of the claims, and does not introduce new matter.