In a long-awaited decision, the Federal Circuit, sitting en banc, has ruled that petitioners in AIA patent trials bear the burden of proving that proposed amended claims are unpatentable. The decision, Aqua Products v. Matal, upends the PTAB’s practice, developed in prior Board opinions (and approved in Federal Circuit panel opinions), requiring patent owners to prove that amended claims are patentable.
Key Takeaway: The Federal Circuit’s en banc ruling means that, at least in the near term, and possibly the long term as well, petitioners will have the burden of proving amended claims are unpatentable. While patent owners will continue to have an initial burden of production in drafting and supporting a motion to amend, the Board may not place the ultimate burden of persuasion on a patent owner to establish patentability of amended claims. Rather, once a patent owner has provided sufficient information, as provided by PTO rules, to justify a motion to amend, the burden of persuasion will lie with the petitioner to prove that amended claims are not patentable. This change is likely to have a substantial impact on the rate of successful motions to amend, which will impact AIA trials and district court proceedings.