The Patent Trial and Appeal Board (“PTAB” or “Board”) recently issued guidance on motions to amend in AIA trial proceedings following the Federal Circuit’s en banc decision in Aqua Products, Inc. v. Matal, 872 F.3d 1290 (Fed. Cir. 2017).
Prior to the Federal Circuit’s decision in Aqua Products, the Board placed the burden of persuasion on patent owners to prove patentability of proposed substitute claims presented in a motion to amend in AIA trial proceedings including inter partes review (IPR), post-grant review (PGR) and covered business method (CBM) review. If the Board institutes trial, the patent owner has a statutory right to pursue at least one motion to amend. 35 U.S.C. §§ 316(d), 326(d).
As explained in our recent article , Aqua Products struck down the Board’s practice of placing the burden of persuasion on patent owners to prove patentability of proposed substitute claims.