Fresh From the Bench: Precedential Patent Cases From the Federal Circuit
In almost 150 pages and five separate opinions, a majority of an en banc Circuit remands to the Board the decision in Aqua Products v. Matal, instructing the Board to issue an IPR decision assessing the patentability of the proposed substitute claims without placing the burden of persuasion on the patent owner.
The firm has its retreat this week so any precedential cases decided Thursday or Friday will be included in next week’s report.
Aqua Products, Inc. v. Matal, Fed. Cir. Case 2015-1177 (October 4, 2017)
A majority of the Circuit vacates and remands the Board’s denial of the patent owner’s motion to amend its patent in an IPR proceeding. On remand the Board is instructed 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.
The Circuit accepted en banc review to consider the proper allocation of the burden of proof when amended claims are proffered in IPR proceedings. Specifically, the Circuit considered how the AIA’s statutory language in 35 U.S.C. § 316(e), which places “the burden of proving a proposition of unpatentability by a preponderance of the evidence” onto the petitioner in an IPR, applies to claim amendments authorized by 35 U.S.C. § 316(d). A panel of the Circuit concluded that the Board did not abuse its discretion in denying appellant Aqua Products’ motion to amend various claims of its patent during the course of an IPR. See our report on the panel decision here.
Upon review of the statutory scheme, a majority of the Circuit rules that § 316(e) unambiguously requires the petitioner to prove all propositions of unpatentability, including for amended claims. This conclusion is dictated by the plain language of § 316(e), is supported by the entirety of the statutory scheme of which it is a part, and is reaffirmed by reference to relevant legislative history. Because a majority of the judges believe the statute is ambiguous on this point, the principal opinion written by Judge O’Malley concludes in the alternative that there is no interpretation of the statute by the PTO to which this court must defer under the Supreme Court’s 1984 Chevron decision. In the absence of any such deference, the most reasonable reading of the AIA is one that places the burden of persuasion with respect to the patentability of amended claims on the petitioner.
However, the principal opinion notes its decision is narrow: “Because the participating judges have different views—both as to the judgment we should reach and as to the rationale we should employ, … today’s judgment is narrow. The final written decision of the Board in this case is vacated insofar as it denied the patent owner’s motion to amend the patent. The matter is remanded 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.”
In four concurring-in-part or dissenting-in-part opinions, the judges address the issue of deference to the PTO in its interpretation of its rules under Chevron, and the “burden of production” versus the “burden of persuasion.”