Client Alerts | 08/18/2016

Federal Circuit Grants En Banc Review of PTAB Amendment Practice

Team Contact: Sangeeta Shah

  • patent-litigation
  • post-grant-review1

On August 12, 2016, the U.S. Court of Appeals for the Federal Circuit granted rehearing en banc to appellants in In re Aqua Products, Inc to consider the procedures used by the USPTO Patent Trial and Appeal Board (PTAB) to limit the ability of patent owners to amend claims during AIA post-grant proceedings.


The Leahy-Smith America Invents Act (AIA) created three varieties of administrative proceedings allowing members of the public to challenge the patentability of claims in issued patents: inter partes review (IPR), post grant review (PGR), and the transitional program for covered business method patents (CBM).

The AIA included a statutory right for patent owners in all three AIA trial proceedings to move to amend claims. See 35 U.S.C. § 316(d) (amendments in IPR proceedings). The USPTO exercised its rulemaking power to create procedures for presenting a motion to amend, and PTAB decisions have further interpreted those rules. Most patent owners to date have been unsuccessful in seeking permission to file amended claims.

In re Aqua Products, Inc.

The Federal Circuit has, in its initial cases reviewing USPTO rules governing AIA trials, tended to defer to the UPSTO’s exercise of authority to promulgate rules and to the PTAB’s interpretation of those rules. One example of that trend was in the original In re Aqua Products, Inc.decision, Case No. 2015-1177 (Fed. Cir. May 25, 2016). In Aqua Products, a case involving a patent for a water-propelled automatic swimming pool sweeping device, the patentee sought to amend the claims under review to add three additional limitations. The patent owner argued in its motion that the amended claims were patentable over the two references at issue in the IPR. It focused its argument on one of the newly-added limitations, mentioning the other amendments only in passing. The patent owner also noted that its embodiment of the invention was “successful,” and accused the petitioner of copying the patented design, but did not argue that either fact was an objective indication of non-obviousness. The PTAB agreed that the new claims satisfied the formal requirements of Secion 316(d), but denied the patent owner’s  motion to amend, concluding that it had not demonstrated that the amended claims were distinguishable over the cited references.

In its original ruling the Federal Circuit affirmed. The appeals court adhered to its prior decisions generally upholding the PTAB rules regarding amendment, in part because the PTAB panels do not include examiners and thus lack the capacity to examine amended claims. See Nike, Inc. v. Adidas AG, 812 F.3d 1326 (Fed. Cir. 2016); Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292 (Fed. Cir. 2015). It concluded that those decisions were controlling.

On August 12, however, the Federal Circuit vacated the panel decision in Aqua Products and granted rehearing en banc to consider whether the court’s past decisions on the amendment issue were correct. The court ordered briefing and argument on the following issues:

(a) When the patent owner moves to amend its claims under 35 U.S.C. § 316(d), may the PTO require the patent owner to bear the burden of persuasion, or a burden of production, regarding patentability of the amended claims as a condition of allowing them? Which burdens are permitted under 35 U.S.C. § 316(e)?

(b) When the petitioner does not challenge the patentability of a proposed amended claim, or the Board thinks the challenge is inadequate, may the Board sua sponte raise patentability challenges to such a claim? If so, where would the burden of persuasion, or a burden of production, lie?

In addition, the court specifically invited interested parties to submit amici curiae briefs without seeking consent of the parties or leave of the court.

Practical Significance

The Aqua Products rehearing will present an important opportunity for Federal Circuit judges to debate the operation of AIA trials under somewhat restrictive USPTO PTAB procedures. Some judges have expressed concern about specific PTAB practices, including denying review based on “redundancy” and the high level of deference afforded PTAB fact-finding. Judge Newman, in particular, has been an outspoken dissenter in several AIA appeals. The Aqua Products case may reveal whether the court will continue to defer to the USPTO, or whether it will begin to exert its authority to reshape AIA trial procedures.

For more information on post-grant proceedings, visit

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