August 15, 2016
On August 12, 2016, in In re Aqua Products, Inc., the U.S. Court of Appeals for the Federal Circuit granted Aqua Products’ request for an en banc rehearing that will focus on two important issues concerning PTAB practice. The issues relate to whether the PTAB can require patent owners to make a showing before making a claim amendment and whether it can institute new challenges to patentability on its own. The court requested briefs addressing the following 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?
Oral argument is scheduled for December 9, 2016. Fitch Even attorneys will monitor the case and will report once the Federal Circuit has issued its decision.
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