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15 August 2016Patents

Full Federal Circuit to hear case on IPR patent amendments

The US Court of Appeals for the Federal Circuit has agreed to hear a dispute surrounding the rules for amending patents in Patent Trial and Appeal Board (PTAB) reviews before its full panel of judges.

In a decision handed down on Friday, August 12, the Federal Circuit decided to hear en banc a case involving a pool-cleaning product owned by Aqua Products, vacating its previous opinion.

The court will assess whether, when a patent owner moves to amend its claims during an inter partes review (IPR), the US Patent and Trademark Office (USPTO) should require the owner to bear the burden of persuasion regarding patentability.

It will also assess whether the board can raise patentability challenges of its own accord if the petitioner does not challenge a proposed amendment by the patent owner or if the PTAB thinks a challenge is inadequate.

If either situation exists the Federal Circuit will assess where the burden of persuasion would lie.

In its original ruling, handed down earlier this year, the Federal Circuit upheld USPTO rules that state that a patentee has only one opportunity to propose amendments or substitute claims to a patent during an IPR.

Under the same rules the proposal will be granted only if the patentee also demonstrates that the proposed amendments would make the claims patentable.

At issue is a patent covering a pool cleaner developed by Aqua Products which was challenged by rival company Zodiac Pool Systems.

Zodiac filed for an IPR, which the USPTO instituted before ruling that the claims were invalid due to obviousness because of a combination of two prior art references.

Aqua applied to amend three claims in the patent, US number 8,273,183, but the PTAB refused to accept the amendment—finding that the motion had failed to show that the substituted claims were distinguishable over the prior art.

Aqua and Zodiac separately settled the patent infringement dispute, meaning the case will now just focus on the USPTO defending its position on amendments.

Oral arguments have been scheduled for December 9.

Cyrus Morton, partner at law firm Robins Kaplan, told WIPR: "Most practitioners agree that the PTAB sets too high a bar for amended claims. But the problem with simply keeping the burden on the petitioner is that the petitioner has no way of knowing in advance what the amended claims will be, and no way to have marshaled the appropriate prior art. I also think the Federal Circuit will struggle with the idea of making the petitioner the gatekeeper for insuring patentability of new claims in a patent applicable to the public at large."

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