On October 4, 2017, the Federal Circuit issued a lengthy decision in Aqua Products v. Matal, spanning five opinions and 148 pages, which addressed the proper allocation of the burden of proof when amended claims are offered during inter partes review proceedings (“IPRs”).  Aqua Prods. v. Matal, 2017 U.S. App. LEXIS 19293.

The case concerns U.S. Patent No. 8,273,183, relating to a self-propelled cleaning apparatus for cleaning a submerged surface of a pool or tank, assigned to Aqua Products, Inc, (“Aqua”).  In the underlying IPR proceeding (IPR2013-00159), the Board denied Aqua’s motion to amend various claims of the ’183 patent.  The PTAB had followed its prior practice for deciding motions to amend, which placed a substantive burden of proving patentability on the patent owner.  MasterImage 3D, Inc. v. RealD Inc., No. IPR2015–00040, at *2–4 (P.T.A.B. July 15, 2015) (clarifying Idle Free Sys., Inc. v. Bergstrom, Inc., No. IPR2012–00027, at *4 (P.T.A.B. June 11, 2013)).  Aqua appealed the final written decision of the Board and a panel of the Federal Circuit concluded that the Board did not abuse its discretion in denying Aqua’s amendments.  Aqua requested en banc rehearing, which was granted and the court vacated the panel decision.

Upon en banc rehearing the case, the court interpreted 35 U.S.C. § 316(e) as placing the burden to prove all propositions of claim unpatentability on the petitioner, including amended claims.  To the extent they are inconsistent with its decision in Aqua Products, the court overruled its prior decisions in Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292 (Fed. Cir. 2015); Prolitec, Inc. v. ScentAir Techs., Inc., 807 F.3d 1353 (Fed. Cir. 2015), petition for reh’g pending; Synopsys, Inc. v. Mentor Graphics Corp., 814 F.3d 1309 (Fed. Cir. 2016); and Nike, Inc. v. Adidas AG, 812 F.3d 1326 (Fed. Cir. 2016).  The court vacated the final written decision of the Board insofar as it denied the patent owner’s motion to amend the patent, and remanded it for the Board to issue a final decision under § 318(a) assessing the patentability of the proposed substitute claims without placing the burden of persuasion on the patent owner.

Entry of a Motion Into the IPR Distinguished From Entry of a Claim Into the Patent

The majority opinion distinguished the entry of a motion to amend into the IPR (motions to amend are the vehicle for proposing amended claims in IPR proceedings) from the substantive burden of proof that must be satisfied for entry of an amended claim into the patent:

“. . . any propositions of substantive unpatentability for amended claims are assessed following entry of the amended claims into the IPR proceeding, under the standards that apply to all claims in the proceeding.”

(Page 22, italics in original.)  The court summarized the amendment process:

“. . .  we believe that the only reasonable reading of the burden imposed on the movant in § 316(d) is that the patent owner must satisfy the Board that the statutory criteria in § 316(d)(1)(a)–(b) and § 316(d)(3) are met and that any reasonable procedural obligations imposed by the Director are satisfied before the amendment is entered into the IPR. Only once the proposed amended claims are entered into the IPR does the question of burdens of proof or persuasion on propositions of unpatentability come into play. It is at that point, accordingly, that § 316(e) governs, placing that burden onto the petitioner.”

(Page 24.)

Effects On The Settlement of IPRs

The majority opinion suggested how the the Board could consider a motion to amend in case there is settlement between the parties:

“If a settlement occurs and the IPR is terminated, no certificate incorporating the amendment into the patent ever issues. Section 318(b) makes clear that no certificate either reaffirming a challenged claim or substituting an amended claim for a challenged one issues unless and until the Board chooses to issue a final judgment under § 318(a) in which it assesses the patentability of both categories of claims. . . .

The final sentence of § 317(a) gives the Board the option to proceed to final judgment in any proceeding where the original petitioners choose not to continue their challenge. The Board might do this for any number of reasons. . . .

Should the Board elect to continue to a final written decision in this scenario, § 318(a) requires the Board to undertake a patentability analysis on all original and amended claims in the proceeding. Thus, it is at that point, and not earlier, that the statute contemplates consideration of an amended claim’s patentability. As the Supreme Court recognized in Cuozzo, where the challenger ceases to participate in the IPR and the Board proceeds to final judgment, it is the Board that must justify any finding of unpatentability by reference to the evidence of record in the IPR. . . .”

(Pages 34-35.)

The Board Must Base Its Patentability Determinations on the Entirety of the Record Before It

The court’s inquiry about whether the Board may sua sponte raise patentability challenges to the amended claims was “reserved for another day,” but the court did reiterate the panel decision that the Board may base its patentability determinations of amended claims on the entire record before it, and not limit itself solely on the face of the motion to amend.  (Pages 60-62.)  The court noted the Board’s decision to reject Aqua’s proposed amended claims without consideration of the entirety of the IPR record as an independent basis for vacating and remanding the matter to the Board.

Analysis

Patent owners and petitioners routinely argued issues of patentability of proposed claim amendments prior to Aqua Products.  However, Aqua Products shifted the analysis from whether the patent owner proved patentability, to whether the petitioner demonstrated by a preponderance of the evidence that an amended claim is unpatentable.  Post Aqua Products, petitioners must assume that a motion to amend claims will get more of the Board’s attention, and the petitioner will bear more responsibility to make a full and convincing record of unpatentability of amended claims.  If it turns out that the Board grants more motions to amend post Aqua Products, petitioners will have to more carefully consider the availability of narrowing amendments that the patent owner could assert before recommending an IPR petition strategy.  Similarly, patent owners will have to decide if the guidance provided by Aqua Products will merit more frequent filing of motions to amend or if it is preferable to procure amended claims via reissue or continuation practice.