Federal Circuit set to Review PTAB’s Amendment Process

By: Tammy Dunn and Monica Katthage


Historically, the Patent Trial and Appeal Board (PTAB) has issued near blanket refusals to allow amendments to claims despite the fact that the inter partes review (IPR) statute of 35 U.S.C. § 316(d) expressly allows patent owners to move to do so.  This historical difficulty in amending claims during an IPR is a source of great frustration in post-grant practice for practitioners before the PTAB who represent patent owners, while holding great appeal for petitioners.  In fact, it has been one of many compelling reasons for defendants in patent litigation lawsuits to file a petition for IPR.

Earlier this year, the Federal Circuit opined in In re Aqua Products, Inc., 823 F.3d 1369 (Fed. Cir. 2016), that the burden to prove patentability of an amended claim in an IPR rests squarely with the patent owner.  Namely, that in deciding a motion to amend claims, the Board need only consider the arguments presented by the patent owner, and does not need to perform a full reexamination of the proposed claims.

On August 12, the Federal Circuit vacated that decision, and granted an en banc appeal to address the following two questions:

  • 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)?
  • 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?

Oral argument is scheduled for December 9, 2016.  Osha Liang attorneys will monitor the case and report once the Federal Circuit has issued its decision.