The only pending en banc patent case before the Federal Circuit is In re Aqua Products (Appeal No. 15-1177) involving claim amendments during inter partes review. The Patent Statute contemplates claim amendments as a possibility but not a right — notably, 35 U.S.C. 316(d) states that “the patent owner may file 1 motion to amend the patent” with additional motions to amend permitted in limited situations. The scope of amendment is also limited to (A) cancelling challenged claims and (B) proposing “a reasonable number of substitute claims” that do not “enlarge the scope of the claims of the patent or introduce new matter.”
In its implementation regulations, the USPTO interpreted the right to a motion as something much less than a right to amend and required, inter alia, that the patentee provide evidence that any proposed substitute claims be patentable over the known prior art. See Idle Free Sys., Inc. v. Bergstrom, Inc., IPR2012–00027, 2013 WL 5947697 (PTAB June 11, 2013).
The short panel opinion in Aqua the Federal Circuit reaffirmed the USPTO’s tightly restrictive approach – following its own prior holdings. See, for example, Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1307−08 (Fed. Cir. 2015).
The underlying case involves a self-propelled robotic swimming pool cleaner that uses an internal pump both as a vacuum cleaner and as the propulsion system. U.S. Patent No. 8,273,183. After the IPR was initiated, Aqua moved to amend three of the claims to include the limitations found in the claims that had not been challenged. In particular, the patentee asked to substitute claims 1, 8, and 20 with claims 22-24 respectively. The new claims included a set of new limitations, including a propulsion “vector limitation” that required a jet stream configured to create a downward vector force rear of the front wheels. This appeared to be a reasonable request that would move the case toward conclusion, and the PTAB agreed that these new claims satisfied the formal requirements of Section 316(d). However, the PTAB refused to allow the amendment – holding that the patentee had failed to show that the amended claims were sufficiently beyond the prior art.
In rejecting the amendment motion, the PTAB did not conduct a fully obviousness analysis, but instead focused on the new elements and considered whether the patentee had shown those elements to render the claim valid over the prior art. Defending that approach on appeal, the Agency has defiantly argued that its rules regarding amendments and its application of those rules are both reasonable and entitled to substantial deference from the Court of Appeals.
Thus, the pending en banc questions focus on this stance:
1) In an IPR, when the patent owner moves to amend claims under 35 U.S.C. § 316(d), may the USPTO require the patent owner to bear the burden of persuasion, or a burden of production, regarding patentability of the amended claims?
2) When the petitioner in an IPR does not challenge the patentability of proposed amended claims or the Board finds the challenge inadequate, may the Board raise a patentability challenge on its own, and if so, where would the burdens lie?
Although prior Federal Circuit cases have supported the PTAB approach, the September 2016 decision in Veritas Tech v. Veeam Software (Fed. Cir. 2016) reversed that trend. In that case, the court held that the PTAB had acted in an arbitrary and capricious manner by denying the patentee’s motion to amend its challenged claims after failing to discuss each added feature separately.
The top-side briefs have been filed in the case with Amicus support for petitioner:
- [AquaRehearingBriefPhRMA] [AquaRehearingBriefCWRU] [AquaRehearingBriefAmiciTop]
- IPO (Section 316(e) applies here and places the burden of proving a proposition of unpatentability onto the petitioner, not the patentee.)
- AIPLA (The current amendment practice “does not provide patent owners with the fair and meaningful opportunity to amend claims that Congress envisioned”.)
- PhRMA (Amendments are very important to patentees)
- BIO (PTO may not impose any burden of proving patentability in an IPR process. Rather, the focus is on unpatentability – and that burden is upon the petitioner.)
- Case Western Law Clinic (Although the PTO has rulemaking authority in this area, it exceeds that authority by ceding authority to the administrative patent judges.)
- Houston IP Law Ass’n (The very small number of successful motions to amend reveals a problem.)
The PTO Brief along with any amicus in support are due over the next two weeks.