On Wednesday, October 4, 2017, the Court of Appeals for the Federal Circuit (CAFC) ruled en banc that a petitioner challenging the validity of patent claims in post grant review proceedings has the burden of showing that the new claims are unpatentable.
This recent ruling in Aqua Products Inc. v. Joseph Matal, Case No. 15-1177, (Fed. Cir. 2017) changes the United States Patent and Trademark Office (USPTO) rules that previously placed the burden in such reviews on the patent owner to show that proposed claims are patentable. The CAFC ruling also provides an easier path for amending patents in post grant proceedings under the America Invents Act (AIA).
The Patent Trial and Appeal Board (PTAB) has granted very few requests by patent owners to amend claims to avoid finding their patent claims invalid. Until now, it has been very difficult for patent owners to rebut invalidity arguments about newly presented claims, so this change is a bright light for patent owners. It is very likely that this shift in the burden will lead to filing more motions to amend claims before the PTAB. It is interesting to note that Judge O'Malley's opinion included the PTAB's statistics indicating that 112 out of 118 motions to amend patent claims in AIA reviews have been denied.
On a cautionary note, claim amendments may be advantageous in inter partes review proceedings, but could be detrimental to the patent owner in litigation. Many patents challenged at the PTAB are, or will be, involved in federal court infringement litigation. The doctrine of intervening rights may shield alleged infringers from liability if the claims of the patent are amended. An intervening rights defense may prevent the patent owner from recovering past damages.
As post grant review petitioners and patent owners begin applying these new standards, they may see additional rules out of the USPTO to address the Federal Circuit's ruling. The patent bar will be closely watching to determine how best to navigate the details of this ruling, including any changes that may come out of the PTAB.
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