The Federal Circuit seemingly had put to rest the question of whether, in making an amendment in an IPR, the petitioner bears the burden of proving an amended claim unpatentable or the patent owner bears the burden of proving the amended claim patentable. Microsoft Corp. v. Proxyconn, Inc. upheld PTAB procedures placing the burden on the patent owner to prove patentability. Other CAFC panels—including Prolitec, Inc. v. ScentAir Techs., Inc. and Nike, Inc. v. Adidas AG—followed. Currently, claim amendments are evaluated in accordance with the PTAB’s guidance in Idle Free Systems, Inc. v. Bergstrom, Inc. and MasterImage 3D, Inc. v. RealD Inc. As set out in these cases, the patent owner must prove patentability over prior art of record, which includes the prior art cited in the original prosecution of the challenged patent, as well as prior art that the patent owner should put on the record in accordance with its duty of candor.
However, with In re Aqua Products, Inc., the Federal Circuit will hear en banc a challenge to the PTAB’s practice of putting the burden on the patent owner. Under that practice, the vast majority of claims reaching final written decision are deemed unpatentable, with amendments to save claims rarely allowed. Accordingly, if the Federal Circuit were to reverse the practice of forcing the patent owner to prove patentability, the balance of power in an IPR could change significantly.
Earlier CAFC panels approved placing the burden on the patent owner despite the plain language of the statute that imposes on the petitioner “the burden of proving a proposition of unpatentability by a preponderance of the evidence.” Those panels reasoned that the statute also authorizes the PTO to set “standards and procedures for allowing the patent owner to move to amend the patent.” But the holdings in those cases—that the PTAB’s amendment practice was a reasonable exercise of its authority to proscribe regulations—were limited to the circumstances of the cases.
Aqua Products and Prolitec, which was stayed pending the decision in Aqua Products, may not be just déjà vu, as they potentially present different circumstances that could lead to a different result. These cases have in common that a claim amendment was rejected because the patent owner had not shown patentability over a combination of references. The references were of record, but the combination had not previously been proposed for the claims in question.
In Aqua Products, the amended claims incorporated limitations based on a dependent claim for which the PTAB did not institute IPR. The petitioner had never argued that the combination of references for which the PTAB instituted a trial rendered that dependent claim unpatentable. Rather, the petitioner’s challenge to that dependent claim, based on other references, was rejected in the institution decision. This history suggests that the amended claims might be patentable over the prior art of record. Nonetheless, the PTAB denied a motion to amend which added limitations based on that dependent claim, faulting the patent owner for failing to prove its amended claims were patentable over the references being offered to challenge other claims in the patent.
Prolitec similarly involves a PTAB refusal to enter an amendment because the motion to amend failed to prove patentability over a combination of references, both of which were of record but had not previously been argued in combination. In Prolitec, one reference of that combination was relied upon in the IPR. The other reference from the combination was cited, but overcome, in the original prosecution.
Forcing the patent owner to foresee and rebut any possible combination of references that the PTAB might envisage when rejecting a motion to amend may seem harsh. Yet, the PTO defends this practice as reasonable, a position that some say is “defiant.” In granting rehearing en banc, the Federal Circuit is acknowledging that the issue warrants review, requesting briefing from the parties and amici on two questions.
The first question seeks input on how to resolve the tension between sections of the patent statute placing the burden of proving unpatentability on the petitioner and sections authorizing the PTO to set standards and procedures for amendments, which it has done to place that burden on the patent owner. The CAFC seems to be mulling allocation of the burden of production and the burden of persuasion when a motion to amend is filed. The second question focuses on scenarios in which the petitioner either doesn’t make a challenge or makes a challenge that the PTAB views as inadequate. Who then bears these burdens if the PTAB sua sponte proposes its own reasons for unpatentability of amended claims?
Taking a case en banc does not necessarily mean that the CAFC is going to change anything. Resolution of these cases may well turn on specifics of the cases or a parsing of the sections of the statute to reconcile seeming contradictions as those sections are applied by the PTAB.
However, petitioners facing a motion to amend might do well to avoid complacency until it is known just how high a burden they bear for proving unpatentability. A possible outcome of this case is that petitioners will need to do more to avoid facing a patent with amended claims that might be a threat to them. Patent owners, on the other hand, might factor in the possibility of change when evaluating the value of using an IPR to quickly secure amended claims that it might then enforce against the petitioner, versus the historically low success rate for motions to amend. As with many issues in this relatively new, but extremely important, process for resolving patent disputes, this issue bears watching.