In re Aqua: Amending Claims Post Grant in an IPR

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:

  • [AquaRehearingBriefPatentee]
  • [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.

 

22 thoughts on “In re Aqua: Amending Claims Post Grant in an IPR

  1. Haven’t read the briefs, but isn’t there a construction argument? “May” has two meanings. One, it can mean that something is possible. Two, it can mean permission. Seems to be an argument that the rule grants permission, not a possibility, which is consistent with nearly all previous post-grant proceedings before IPRs were enacted.

  2. Even though only a small percentage of patent owners even attempt claim substitutions on IPRs, it has certainly been a burning amicus issue. The PTO’s concern is that it is under a statutory obligation to get IPRs decided on one year. That is also needed for IPRs to meet their goal of reducing patent litigation costs and not delaying patent suits. [Unrestricted claim amendments in reexaminations had significantly delayed several of them.]
    Clearer IPR rules might help. In particular, clearly defining how long after a patent owner receives all the asserted prior art and claim charts in the IPR Petition can patent owners still request claim substitutions? What about the tactic of filing contingent claim amendments to keep all original claims in play along with the proposed substitute claims? Etc.

    Regarding the second en banc question above, allowing completely unexamined new claims to issue does not seem compatable with the PTO’s claim examination obligation.

    1. The second question is indeed interesting, and as I pointed out previously, any amendment that introduces something that was not fully vetted previously (this eliminates the bare amendment to make a dependent claim be in indpdendent claim form) STILL must be examined by the Office (the petitioner simply is NOT the Office, and just because the petitioner “has no problem” with an amendment cannot – by law – substitute for an actual examination on the merits by the entity charged with THAT duty by Congress in the first instance.

    2. Why do so few patent owners put forward claim amendments, I wonder.

      Is it only intervening rights, or are there other reasons.

      For me, looking in from Europe, it seems so strange. When patents are opposed at the EPO, rare is the case where the owner offers no “Auxiliary Request”. This is a “fall-back” position, a request for a narrower main claim to be upheld, even if the issued claim goes down. Statistically, at the EPO, nearly half of all patents opposed survive, but with narrower claims.

      So, even in the USA, I should have thought there is nearly always a narrower claim that could be presented, that still has useful scope but does see off the validity attacks.

      What am I not appreciating? Paul, can you help?

      1. MaxDrei,

        Just to be clear, the claims that you reference are dependent claims already examined in the granted patent under review, correct?

        Or are you talking about new “intermediate” claims previously not examined…?

        1. That is a penetrating question, anon, that would take many words to answer exhaustively.

          In recent years the EPO, as part of its quest for higher “quality”, has been doing what it calls “raising the bar”. Part of that is to ratchet down on the admissibility of post-issue amendments (fall-back positions, in response to attacks on the independent claim that have good prospects of success) that pluck stuff out of the specification. Amendments that simply fold into claim 1 the subject matter of a dependent claim are treated more leniently.

          It is a funny old world, ever smaller. Remedies against perceived abuses, invented in one country, spread ever quicker to other jurisdictions.

          At the EPO, it is believed that patents on deserving contributions to the art should be upheld while claims without merit should be extinguished (by whatever legal tool falls to hand). The highest priority is that the scope of claim upheld must be commensurate with the contribution to the art. Claim drafting skills are paramount. In the absence of any doctrine of binding precedent, advocacy skills, technical expert talking to technical expert, are vital.

          Utterly different in the USA, I appreciate, where the debate is between attorneys at law rather than between technical experts.

          1. Actually here you need to be in both worlds, legal and technical.

            Not sure that I see an actual answer to my “penetrating question,” though – and I don’t want to put words in your mouth, so can you please clarify your answer?

            (also, here, the “whatever legal t001” must still be the proper legal t001 – unless you are cheering on broken scoreboards and the de-evolution of the rule of law (that rule of law being in particular the US separation of powers and checks and balances that our Constitution prizes so dearly; notwithstanding those on this board who would eagerly turn a blind eye to achieve their desired Ends).

          2. …and a simple rather than exhausting answer could be either:

            1) only actual examined claims are what you are referring to;

            or

            2) claims NOT previously expressly examined are being referred to.

            (it’s really not much more complicated than that, is it?)

            1. Actually at the EPO is is not as prescriptive as that. It is more flexible at the EPO.

              In litigation it is always a balance, between prescription, for procedural efficiency, and doing justice, at the cost of some loss of procedural efficiency.

              At the EPO, there is so much discretion, whether or not to admit an amendment to the claim, to save the patent from extinction.

                1. Thank you for the links.

                  But the links do not supply YOUR answer. It is rather amazing how non-commital you have been to what is basically a binary question.

                  Either the EPO allows unexamined claims to pass to grant or they do not. Playing coy is not all that helpful.

                  From your EPO link, since I searched matter is not fair game for amendments, and amendments must receive the blessing of the examiner to be entered, it now appears that you have vacilllated back to a “unexamined amendments are NOT allowed” stance.”

                  Is that a proper paraphrase?

                2. …and the gov uk link was kind of a punt (handing over the entire manual and saying “it’s in there somewhere” is not very helpful)

                3. In the context of EPO practice, it is not helpful to use the terminology “permissible”. The word “admissible” is better. For any given claim amendment, the first hurdle to overcome it to get it admitted to the proceedings. Rule 137(5) reveals the circumstances (“combines with”) when a claim to unsearched might nevertheless not be refused admission to the proceedings.

                  The EPC (for historical reasons) regards as separate process steps the step of searching and the step of examining on the merits. No claim gets to issue until after it has been examined. No claim gets examined that hasn’t already been fully searched. No claim amendment gets admitted, for searching, that falls foul of Rule 137(5).

                  You (anon) see all this as a binary Y/N question. Whenever discretion is involved, about whether something “combines” to “form a single inventive concept”, it ain’t that simple.

                  In EPO practice, there are a lot of places where discretion is exercised.

                4. It really is a binary question, MaxDrei.

                  Either the possibility exists or it does not.

                  The fact that the possibility may involve “discretion” does not change the binary nature of the question.

      2. Max, Why not?

        1. The new claims will likely have intervening rights and be worthless in cases already filed.

        2. Anything one says about patentability can and will be used against one in determining infringement. No prosecutor who has any litigation experience will say anything at about his claims or the prior art if he can avoid it.

        1. Your point 2 has been made previously (under the color of the effects of patent profanity).

          Here, I find it interesting that it may be possible to obtain unexamined claims in the EPO….

          Of course, a caveat should be made that such is not what MaxDrei is meaning.

          And of course, I will reiterate that THAT avenue is not possible here in the US, given that it is only the Office (and certainly neither the petitioner nor the patent holder) that can grant patent claims.

          So if we take the low hanging fruit of amendments that just change the form of dependent (already examined) claims into independent claims, we can clarify (perhaps) what is really being asked for with wanting amendments in the post grant mechanism (and without engaging a new and full examination).

        2. Thanks Ned, for the confirmation on intervening rights.

          As to the universal claim construction “squeeze”, between infringement and validity, to which patent owners everywhere are subject, it is interesting how differently it manifests itself, and is managed, as one moves between jurisdictions.

    3. Paul, would there be any problem with requiring the PO to file his motion for adding claims by the deadline for filing his preliminary response?

      That way, the petitioner might respond with Observations, or not, on the New claims. The PTAB, in its institution decision, might both institute with respect to the challenged claims and at the same time either grant the new claims or declare them subject to trial as well. The Patent Owner Response would be directed to the petition and its evidence with respect to the challenged claims, and to the Observations and its evidence with respect to the New claims.

        1. (again, I am taking the low hanging fruit of the “merely changing already examined dependent claims into independent form” off of the table)

  3. Excellent questions put to the court.

    Much better than trying to turn a mere right to petition into any sort of actual right to amend.

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