stamp approved with red text over white background

An updated discussion of this issue is available here: Who Must Bear the Burden of Proof Regarding Patentability of Amended Claims?

The Federal Circuit confirmed in a precedential opinion that the burden to prove patentability of an amended claim in an IPR proceeding rests squarely with the patentee, and in deciding a motion to amend claims, the Board only need consider the arguments presented by the patentee, not perform a full reexamination of the proposed claims. In In re Aqua Products, Inc., Appeal No. 2015-1177 (Fed. Cir. May 25, 2016), the Federal Circuit affirmed the PTAB’s denial of patentee Aqua’s motion to substitute claims because Aqua failed to prove patentability of the substitute claims.  Aqua then appealed challenging the Board’s amendment process.

On appeal, Aqua argued that Board regulations requiring the patentee to demonstrate that an amended claim is patentable over the art of record are unsupported by the (AIA) statute, and that the Board’s interpretation of those regulations impermissibly places the burden on the patentee to show non-obviousness. In rejecting that argument, however, the Federal Circuit acknowledged that its earlier precedents already decided that this burden is properly on the patentee in a motion to amend, as discussed here. Accordingly, the court determined it cannot revisit that issue.

Thus, the “only issue” left for the Federal Circuit to decide in this case was whether the Board abused its discretion by failing to evaluate objective indicia of non-obviousness and various new limitations in the proposed claims, even though Aqua did not argue that those indicia and limitations distinguish the proposed claims over the prior art.

Reviewing Aqua’s motion to amend, the Court noted that although Aqua’s proposed claims added several limitations to the existing claims, Aqua only focused on one limitation when arguing that the new claims were not obvious in view of the art of record.  Aqua did not argue that the other limitations would have been non-obvious in light of the art.  In addition, in its argument regarding secondary considerations, Aqua did not tie the objective indicia of non-obviousness to the specific limitation that Aqua argued rendered the substitute claims non-obvious.

The Board has no obligation to fully reexamine the proposed claims, and thus effectively shift the burden from the patentee to the Board.

Because the burden of showing that the substitute claims were patentable rests with the patentee, the Court concluded that the Board’s evaluation of Aqua’s motion to amend was properly limited to considering only those arguments that Aqua actually raised. Slip Op. at 6-7.  The Board has no obligation to fully reexamine the proposed claims, and thus effectively shift the burden from the patentee to the Board.  Slip Op. at 7. In denying a motion to amend, the Board only needs to show that it fully considered the particular arguments raised by the patentee and provide a reasoned explanation for why the Board found those arguments unpersuasive. Slip Op. at 7.

The Federal Circuit was not persuaded by Aqua’s arguments that the Board was “on notice” of Aqua’s arguments with respect other limitations because although Aqua’s motion referenced the additional limitations, “none of the descriptions were made in the context of supporting the patentability of the amended claims in light of the combination of [the referenced prior art].” Slip Op. at 7.