Petitioner has the Burden of Proving Unpatentability of Amended Patent Claims in IPRs 

Intellectual Property Alert

October 12, 2017

During an inter partes review (IPR) proceeding concerning Aqua Products, Inc.’s (Aqua) U.S. Patent No. 8,273,183 (the ‘183 patent), the Patent Trial and Appeal Board1 denied Aqua’s motion to amend certain ‘183 patent claims. In May 2016, a Federal Circuit panel affirmed the PTAB’s decision, finding that the PTAB did not abuse its discretion in denying Aqua’s motion to amend. On October 4, 2017, the Federal Circuit issued an en banc decision vacating and remanding the panel decision.2

Until now, the PTAB has placed on patent owners the burden of proving the patentability of substitute/amended claims filed in a motion to amend during an IPR proceeding.3 In the IPR proceeding that led to the Federal Circuit’s Aqua Products, Inc. v. Matal decision, the PTAB determined that Aqua did not meet its burden and denied Aqua’s motion to amend. Arguing that the PTAB improperly placed the burden of proving patentability on the patent owner, rather than placing the burden on the petitioner (i.e., the party filing a petition requesting inter partes review) to prove unpatentability of the amended claims, Aqua appealed.

Far from reaching a consensus, the en banc court issued five opinions totaling 148 pages. Consequently, as the court noted, its judgment in Aqua Products, Inc. v. Matal was narrow.

Eleven judges participated in the Aqua appeal, which involved the interpretation of 35 U.S.C. § 316(e):

(e) Evidentiary standards. – In an inter partes review instituted under this chapter, the petitioner shall have the burden of proving a proposition of unpatentability by a preponderance of the evidence.

Five judges determined that 35 U.S.C. § 316(e) unambiguously requires the petitioner to prove all propositions of unpatentability, including unpatentability of amended claims. However, because the majority of the court found 35 U.S.C. § 316(e) to be ambiguous on the question of whether the petitioner bears the burden of proving unpatentability of amended claims, the court undertook a Chevron analysis.4

The five judges that found 35 U.S.C. § 316(e) unambiguous went on to find that even if the statute were ambiguous, the PTAB’s construction of the statute was not a permissible one and, therefore, step two of the Chevron analysis was not satisfied, and the PTAB’s construction of 35 U.S.C. § 316(e) was owed no deference. Two other judges concurred in that result. Accordingly, a majority of the court found that: “(1) there is no considered statutory interpretation that has been undertaken by the agency [PTO] to which we must defer; and (2) in the absence of regulatory action to which we must defer, the burden of proving the unpatentability of all claims in an IPR — both original and amended — is on the petitioner.”5

So, barring a contrary decision by the Supreme Court, unless and until the PTO can meet its obligations under step two of Chevron by engaging “in notice and comment rule-making,”6 the PTAB must assess the patentability of amended claims in an IPR without placing the burden of persuasion on the patent owner. The effect will likely be that the number of proposed claim amendments allowed by the PTAB will increase.

1 The Patent Trial and Appeal Board (PTAB) is the branch of the U.S. Patent and Trademark Office (PTO) that conducts “trials,” such as inter partes and post-grant reviews.

2 Aqua Products, Inc. v. Matal, Appeal No. 2015-1177 (Fed. Cir. Oct. 4, 2017).

3 The PTAB has rarely granted patent owners’ motions to amend claims. As the court noted, from the time that IPRs first became available in September 2012 until April 30, 2016, the PTAB completely denied 112 of 118 patent owner motions to amend claims. Of the six motions that were not completely denied, the PTAB partially denied four. See Slip Op. (O’Malley) at 12.

4 Articulated in Chevron, U.S.A. Inc. v. Natural Resources Defense Council, Inc., 467 U.S. 837 (1984), the Chevron analysis is a two-part test used by courts to determine whether deference is owed to the interpretation applied to a statute by an administrative agency that oversees the statute’s administration. In a Chevron analysis, a court must first determine “whether Congress has directly spoken to the precise question at issue.” Chevron, 467 U.S. at 842. If the answer is “yes,” that ends the inquiry, and the court must give effect to Congress’s unambiguous intent. If the answer is “no,” the court must then determine “whether the agency’s answer [to the question at issue] is based on a permissible construction of the statute.” Id. at 843.

5 Slip Op. (O’Malley) at 60.

6 Slip Op. (O’Malley) at 66.


Related Practices

To discuss any questions you may have regarding the issues discussed in this Alert please contact Martin Pavane at 212-883-4994 or or Darren Mogil at 212-883-4976 or