On November 21^st, the PTAB issued guidance on motions to amend based on the Federal Circuit’s en banc decision in Aqua Products, Inc. v. Matal, 872 F.3d 1290 (Fed. Cir. 2017). In view of the Aqua Products decision, the PTAB will not place the burden of persuasion on the patent owner with respect to the patentability of substitute claims presented in a motion to amend. Instead, after the patent owner files a motion to amend, the Board will determine whether the substitute claims are unpatentable by a preponderance of the evidence based on the entirety of the record, including the opposition by the petitioner.

The practice and procedure for motions to amend will remain unchanged but the PTAB provided guidance for addressing procedures for briefing related to motion to amend in view of Aqua Products. For parties with pending motions to amend at the time that the Aqua Products decision issued, the PTAB has taken steps or will take steps to contact the parties to set up a conference call where briefing additions or changes may be requested. For pending motions to amend, if needed, the parties may contact the Board for a conference call to discuss the impact of Aqua Products. For patent owners that wish to file a new or substitute motion to amend where the Due Date 1 has passed (designated in the Scheduling Order), the patent owner must contact the PTAB as soon as reasonably possible to arrange a conference call. As the PTAB issues orders addressing procedures for handling briefing related to motions to amend, it will be worthwhile to monitor the trends that develop.