by Dennis Crouch
Aqua Products v. Matal (Fed. Cir. 2017) (en banc) [Aqua Products Decision]
In a nuanced set of opinions the Federal Circuit – with no clear majority opinion – holds merely that:
The final written decision of the Board in this case is vacated insofar as it denied the patent owner’s motion to amend the patent. The matter is remanded for the Board to issue a final decision under § 318(a) assessing the patentability of the proposed substitute claims without placing the burden of persuasion on the patent owner.
The ‘leading opinion’ by Judge O’Malley goes on to explain:
Because the participating judges have different views—both as to the judgment we should reach and as to the rationale we should employ in support of that judgment, as explained below, today’s judgment is narrow.
This result was supported by a 7-member panel.
The opinion package, is 148 pages in length and includes five separate opinions walking the question of deference to PTO Decisionmaking.
- Opinion filed by Circuit Judge O’MALLEY, in which Circuit Judges NEWMAN, LOURIE, MOORE, and WALLACH join, and in which Circuit Judges DYK and REYNA concur in result.
- Opinion filed by Circuit Judge MOORE, in which Circuit Judges NEWMAN and O’MALLEY join.
- Opinion filed by Circuit Judge REYNA, in which Circuit Judge DYK joins, and in which Chief Judge PROST and Circuit Judges TARANTO, CHEN, and HUGHES join in part.
- Opinion filed by Circuit Judge TARANTO, in which Chief Judge PROST and Circuit Judges CHEN and HUGHES join, dissenting from the judgment, and in which Circuit Judges DYK and REYNA join in part in other respects.
- Opinion dissenting from the judgment filed by Circuit Judge HUGHES, in which Circuit Judge CHEN joins.
The setup and context here is ripe for Supreme Court review. More to come later.