A Seismic (Burden) Shift in Amending Claims in Inter Partes Reviews

Since the passage of the Leahy-Smith America Invents Act (“AIA”), it has been extremely difficult, if not impossible, for a patent owner whose patent is challenged in an inter partes review (IPR) to amend the challenged claims. As of April 30, 2016, the Patent Trial and Appeal Board (PTAB) had completely denied 112 of 118 patent owner motions to amend and partially denied motions to amend in four of the six remaining IPRs.

Today’s en banc decision by the United States Court of Appeals for the Federal Circuit in Aqua Products, Inc. v. U.S. Patent and Trademark Office, Case No. 2015-1177 (Federal Circuit October 4, 2017) (en banc), could completely alter the IPR landscape relating to the success of patent owner claim amendments.

In Aqua Products, Inc. v. U.S. Patent and Trademark Office, the Federal Circuit considered the proper allocation of the burden when a patent owner amends claims during an IPR. Prior to this decision, patent owners were required to demonstrate the patentability of any claim amendments offered during an IPR over the prior art of record. As noted above, very few patent owners succeeded in meeting this burden.

According to the Aqua decision, the petitioner in an IPR– the party challenging the patent claims– now bears the “burden of persuasion” to prove all propositions of unpatentability. The “burden of persuasion” refers to a party’s obligation to convince a fact-finder, such as the PTAB, that its position is the correct one. Under this shifted burden, when a patent owner offers amended claims to overcome prior art cited in an IPR, it will now be the petitioner who must persuade the PTAB that the amended claims are still not patentable.

It remains to be seen how this new standard actually will be applied by the PTAB. However, the decision does stress the importance of the prior art selected by a petitioner in forming the basis of an IPR challenge. When facing a strong prior art challenge, a patent owner may still find itself boxed in and may not be able to provide meaningful claim amendments.

With this burden reversal, claim amendments, which were previously a lesser concern in any IPR, will now likely become the focus of these proceedings. Petitioners should carefully review patent disclosures and anticipate potential claim amendments in view of the combinations of prior art outlined in an IPR petitioner.

Posted in: IP Litigation



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