Petitioners must prove unpatentability of amended claims in IPR
The US Court of Appeals for the Federal Circuit has set aside Patent Trial and Appeal Board (PTAB) rules that had required patent owners to show the patentability of their amended claims in an inter partes review (IPR).
In a 148-page en banc decision handed down yesterday, October 4, the Federal Circuit held that the petitioner needs to prove all instances of unpatentability, including for amended claims.
Circuit Judge Kathleen O’Malley wrote for the majority in the case, Aqua Products v Matal.
Circuit Judges Newman, Lourie, Moore and Wallach joined the opinion, while Dyk and Reyna concurred in the result.
“This conclusion is dictated by the plain language of 35 USC section 316(e), is supported by the entirety of the statutory scheme of which it is a part, and is reaffirmed by reference to relevant legislative history,” said O’Malley.
Under 35 USC section 316(e), “the burden of proving a proposition of unpatentability by a preponderance of the evidence” is placed on the petitioner in an IPR.
According to O’Malley, a majority of the judges participating in the proceeding believed the statute is ambiguous on this point.
“And we believe that, in the absence of any required deference, the most reasonable reading of the America Invents Act is one that places the burden of persuasion with respect to the patentability of amended claims on the petitioner,” she said.
In a footnote, the court added that its prior decisions in Microsoft v Proxyconn; Prolitec v ScentAir Techs; Synopsys v Mentor Graphics; and Nike v Adidas are overruled to the extent they are inconsistent with the conclusion.
Because the judges had different views (both on the judgment and the rationale), the judgment was “narrow”, O’Malley said.
She concluded: “The board must follow this same practice in all pending IPRs unless and until the director [of the USPTO] engages in notice and comment rulemaking.”
Stephen Maebius of Foley & Lardner previously told WIPR that “an outright reversal of the PTAB on this issue could substantially increase the workload for the PTAB, shifting its role more in the direction of having to examine and assess patentability of claims proposed by a patent owner”.
He added: “Of course, a reversal would be welcomed by patent owners, who feel that the current bar is set too high.”
Michael Weiner, partner at Marshall, Gerstein & Borun, said that the decision creates a “real mess” for the PTAB because it impacts all pending IPRs.
“The PTAB will need to establish procedures and likely issue new rules to address the court’s decision, and will probably need to use its authority to extend its deadlines for pending IPRs.”
IPRs must be decided within one year after institution unless the time period is extended by up to six months for “good cause”, he added.
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