Discussion Board

PTAB Issues Guidance on Claim Amendments Caused by Aqua Products Decision

Team Contact: Sangeeta G. Shah, John P. Rondini

In a November 21, 2017 memorandum, David P. Ruschke, the PTAB’s Chief Administrative Patent Judge, issued new guidance affecting pending and future motions to amend claims in inter partes review proceedings. The guidance memorandum reflects changes to the PTAB’s procedures in light of the Federal Circuit’s decision in Aqua Products, Inc. v. Matal, 872 F.3d 1290 (Fed. Cir. 2017) (en banc). The new guidance lessens the burden on patent owners seeking to amend claims in an IPR by removing the burden of persuasion with respect to the patentability of proposed amended claims, but it retains other the procedural requirements for presenting a motion in compliance with 35 U.S.C. § 316(d).

In the Aqua Products decision, the Federal Circuit rejected the previous PTAB requirement that the patent owner bear the entire burden of proving that proposed amended claims were patentable over the prior art. This requirement had been criticized as unduly restrictive, especially in light of the strict page restrictions applicable to motions to amend. The new guidance memorandum characterizes the Aqua Products decision as one with limited precedential effect, due to the fact that the court’s decision was spread over five separate opinions. See BK Client Alert, “Federal Circuit Rejects Some USPTO Requirements for Amending Claims During IPR Proceedings”. For example, the guidance does not mention the Federal Circuit’s criticism of the PTAB practice of promulgating procedural rules by issuing precedential or informative decisions, rather than through formal administrative rulemaking.

The guidance memorandum states that, consistent with Aqua Products, the PTAB will not place on the patent owner the burden of persuasion on the issue whether proposed substitute claims are patentable. Instead, “the Board will proceed to determine whether the substitute claims are unpatentable by a preponderance of the evidence based on the entirety of the record, including any opposition made by the petitioner. Thus, for example, if the entirety of the evidence of record before the Board is in equipoise as to the unpatentability of one or more substitute claims, the Board will grant the motion to amend with respect to such claims, and the Office will issue a certificate incorporating those claims into the patent at issue.” Memo. at 2.

The memorandum makes clear that remaining procedural requirements for motions to amend remain unchanged. Specifically, motions must conform to the § 316(d) requirements that they propose a reasonable number of substitute claims, the substitute claims do not enlarge scope of the original claims of the patent, and the amended claims do not introduce new matter. In addition, motions to amend must satisfy the requirements of 37 C.F.R. § 42.121 or § 42.221 by setting forth written description support for amendments and support for the claimed effective filing date for each substitute claim. Proposed amendments also must respond to the grounds for unpatentability at issue in the proceeding. Motions also are subject to the existing time schedule and page-limit restrictions, and may be filed only after prior conference with the PTAB panel.