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En Banc Federal Circuit Will Consider Patentee's Burden for Amending Claims in IPR

The en banc Federal Circuit on August 12, 2016, agreed to review the Patent Trial and Appeal Board's interpretation of 35 USC 316(d) as requiring a patent owner to prove the patentability of a proposed amended claim over the art of record.  In re Aqua Products, Inc., Fed. Cir., No. 2015-1177, en banc order 8/12/2016. 

The Court requested briefing from the parties and amici on the following questions:  

1.     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)?

2.     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? If so, where would the burden of persuasion, or a burden of production, lie?    

A supplemental brief of Appellant Aqua Products is due September 26, 2016, and a supplemental brief of the USPTO as intervenor is due October 26, 2016. Oral argument is scheduled for December 9, 2016.
The en banc order vacates the panel opinion in this case concerning a claim to a type of automated, self-propelled swimming pool cleaner.  807 F.3d 1353 (Fed. Cir. 2016).  That decision affirmed the PTAB's denial of a motion to amend the claim because the proposed limitations were within the ordinary skill of the art. Before the Federal Circuit panel, the patentee argued that there is no statutory support for Board regulations requiring the amended claim be patentable over the art of record, or for regulations that place the burden on the patentee to show non-obviousness.
The pending en banc petition in Prolitec, Inc. v. Scentair Technologies, Inc., 807 F.3d 1353 (Fed. Cir. 2015), raising the same issue, is stayed pending a decision in this case.  The Prolitec panel decision (opinion by Prost, joined by Taranto) was issued last December with a dissenting opinion by Judge Newman. The panel decision in Aqua Products was issued last May in a unanimous decision (opinion by Reyna, joined by Prost and Chief Judge Stark, sitting by designation from the District of Delaware).
To read the en banc order, click here; to read the panel decision in this case, click here.