Is the Federal Circuit Under Water?: In re Aqua still Awaiting Decision

As a placeholder – I’ll note here that the pending en banc case of In re Aqua Products regarding amendments during IPR Proceedings is still pending before the Federal Circuit. The court asked two questions:

(a) When the patent owner moves to amend its claims under 35 U.S.C. § 316(d), may the PTO require the patent owner to bear the burden of persuasion, or a burden of production, regarding patentability of the amended claims as a condition of allowing them?  Which burdens are permitted under 35 U.S.C. § 316(e)?

(b) When the petitioner does not challenge the patentability of a proposed amended claim, or the Board thinks the challenge is inadequate, may the Board sua sponte raise patentability challenges to such a claim?  If so, where would the burden of persuasion, or a burden of production, lie?

The en banc order was released in August 2016, and oral arguments heard in December 2016.  The 8-month delay in writing the opinion is unusually long.

In re Aqua: Amending Claims Post Grant in an IPR

In re Aqua: Ambiguity in the Statute Means Deference to the PTO

In re Aqua Products

Lifting the Bar: Federal Circuit finds that the PTAB improperly allowed Amendments during IPR

En Banc Query: Must the PTO Allow Amendments in IPR Proceedings?






28 thoughts on “Is the Federal Circuit Under Water?: In re Aqua still Awaiting Decision

  1. 9

    If I recall correctly, the McDonnell Douglas A-12 panel decision took about 3 years to get out. Not sure if that’s the record for time to decision, but it’s got to be an outlier. Not as many people cared, though, because it wasn’t a patent case–probably something from a board of contract appeals.

    I don’t recall ever seeing anyone compile stats on time between argument and decision in en banc cases. Might not be a bad topic for a law school paper (or at least a guest post by one of Dennis’s students) if there are any trends one could pull out of the data. Eight months doesn’t seem all that long to me to get at least six-ish of twelve-ish judges to agree on a rationale for a decision, especially if there’s a slim majority and the author has to appease several colleagues to keep them in the majority. (Might be worth measuring if there was a positive correlation between size of the majority and speed of issuance, or a negative correlation between number of separate opinions and speed of issuance. Authoring judge effect might not be detectable since there aren’t that many data points per judge, but maybe there’s a way to compare en banc decision times to panel decision times and have a meaningful conclusion. Perhaps there’s even a measurable effect from having the time writing the opinion overlap with the start of the academic year, which is when the majority of the clerks change over, which may hamper the drafting process.)

    The Hyatt § 145 case was another I recall taking a while.

    The court doesn’t put the date of argument on opinions. The oral argument recordings are what I usually use to quickly find he date of an argument, but I don’t know how far back those go.

  2. 8

    Just curious – what is the record for greatest amount of time between when all arguments have been given to the court (specifically, the CAFC) and when a decision is finally rendered?

  3. 7

    It is nearly one year since a jury rendered a verdict of $302 million against Apple in the federal court for the Eastern District of Texas, but Judge Robert W. Schroeder, III still has not published his final decision.

    Virnetx has won three jury verdicts on these patents over the course of six years. All of the error had been litigated out of this case. This delay is both unusual and a scandal.

    1. 7.1

      Ooooh, another “scandal” for the patent maximalists to work themselves up over. Maybe they’ll go picket Judge Schroeder’s house! After all, there’s no “error” left in the case. Nope! Those claims are “rock solid” and Virnext is a very serious company. Totally not just a bunch of vaporware backed by the worst people on the planet. We all must cheer for them in their endless struggle against “Goliath.”

      Virnetx has won three jury verdicts on these patents over the course of six years

      So scary! We’re all so impressed.

      1. 7.1.1


        I doubt you have ever won a bench trial much less a jury trial. Winning three jury verdicts for software patents is a big, big deal.

        “The worst people on the planet?” You are insane. Where does ISIS fit in your calculus?


          Winning three jury verdicts for software patents is a big, big deal.

          I am sure it seems that way to you. But “three jury verdicts” says absolutely nothing about the quality of the patents, especially since we’re talking East Texas here.

          “The worst people on the planet?” You are insane.

          Not really. Just passionate about the government handing out monopolies on functionally claimed logic and destroying the patent system in the process. The kind of people who tend to salivate over “jury victories” involving this stuff (i.e., your kind of people) really are at the bottom of the barrel. But you’re not alone! You shouldn’t feel lonely. It’s a big bottom, and it’s packed. Enjoy the heat and the smell. I mean, it smells like money which is all that really matters, especially if your life is pretty empty otherwise. To heck with everyone else! Monetize, baby. You’re a real patriot.

          Where does ISIS fit in your calculus

          LOL Time to change your pants again. So scary! Shariah patent law is coming! Then we’re going to take away all your private property. Beware! Beware! Kenyan usurpers everywhere.



            If you don’t believe in the jury system, then you must not be an American. Probably some Russian commie or a Silicon Valley elitist; same thing anyway.


              Because real patriots want to monetize logic at the expense of everyone else. Let’s assemble a jury! Very serious stuff.

              And the Founders never would have tolerated agency recocation of a junky logic patent. They died for freederm! Only a socialist would dare question this.


                Your rants, Malcolm, are not “questioning.”

                They are merely you parading your feelings about a form of innovation most accessible to the non-wealthy.

                There is NO inte11ectually honest reason to exclude the type of innovation from patent protection that you seek to exclude, and your rants provide no reasoning or logical basis for that exclusion.

                Maybe do more than just rant….

                1. a form of innovation most accessible to the non-wealthy.

                  Hence the surge of attorney “innovators” into the logic arts.

                  Keep the laughs coming, “anon.” You’re a very serious person! A real champion of the people.


  4. 6

    Since taking the case, the Supreme Court took Oil States.

    If the Fed. Circuit wants to preserve IPRs, it knows it has to at least not make matters worse for patent owners.

    1. 6.1

      If the Fed. Circuit wants to preserve IPRs,

      What does a “want” have to do with anything?

      Should a court (especially a reviewing court) be driven by a sense of “preserving” something?

      I mean, I “get” the notion that the judicial branch will attempt to read the law as written (if possible) in a manner so as to not reach an infirmity question, but that is typically when a different question has been put to the court.

      If the right question has been asked, why would a court’s “wants” have anything to do with properly answering that right question, regardless – or perhaps especially – if the right answer to the right question shows the law as written to be infirm? Does not the sense of Justice demand no less? Is that not a part of the judicial branch’s supposed “objectiveness”…?


          For someone who whines incessantly about things that offend your own feelings, you sure are quick to disparage anyone else that may have a different aim…

          That is so Trump of you…


            a different aim…

            It’s not your “aim” that caused my eyeballs to roll out of their sockets. It’s the pompousness on steroids.

  5. 5

    Dennis, your October 25, 2016 blog report cited above helpfully listed a number of amicus briefs on one side, with nice short positional summaries. Is there an available list of amicus briefs [if any?] on the other side?

    Will either proof burden outcome of this case affect situations where the substituted claims contain claim elements that were not claimed in any original claims? E.g., will the patent owner be under an added disclosure duty burden, and will the petitioner be more or less likely to be allowed to cite additional prior art?

    The concept of the PTO allowing new and different claims without any new prior art search by the PTO or by either party will still bother some people.

    But since more than 80% of IPRs are responses to being sued for asserted infringement there are still never going to be that many attempted IPR claim amendments. Because both the intervening rights statute and narrowed claim scope could seriously impact many such suits.

  6. 3

    Similar delay to McRO. It takes longer when you know the outcome you want and have to find a way to justify it.

    1. 3.1

      Or, in the case of McRo, it takes longer when you know the outcome you want and you know that you can’t justify it. But you’ve got to say something, darn it! So just create a meaningless word salad, pay some homage to fake “structure” that doesn’t appear in the claims, and pretend that until computers came along animators just used their “guts” to decide whether a silent character should open his mouth or not.

  7. 1

    Based on 30+ years of experience of amendment practice in inter Partes post-issue opposition practice at the EPO, I’m not at all surprised by the delay. The subject is extremely delicate. How exactly does one secure the right balance between fairness to the inventor and efficiency of the proceedings. At the EPO, they are still working it out, by trial and error.

    It is hard enough at the EPO without such English law concepts as Binding Precedent and due process. Considerably harder, for the present en Banc panel. I wish it luck and clear vision.

    1. 1.1

      You also have the fact that there is going to be no unanimity over the eventual decisions so you are going to have the inevitable dissents written as well. Certain members of the CAFC (Prost/Dyk/Wallach) seem determined to DESTROY patent VALUE by hook or crook regardless of law or precedence, while others try to reign them in.

      Most of the CAFC court has been extremely sensitive to the sometimes ridiculous values being placed on some patents by most plaintiffs and some juries….so in the past decade, the CAFC has been extremely short-sighted in its decisions which had much farther reaching implications than many of the judges realized.

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