En Banc CAFC Hands Down a Beast Of An Opinion On The Burden Of Persuasion

“…the central conflict at the CAFC deals with the PTAB’s authority to implement the America Invents Act.”


Patrick Anderson Image by: Patrick Anderson | October 5, 2017

Sorry, PTAB, but patent owners will never be your beast of burden (of persuasion, at least).

We’ve walked for miles—through 148 pages of opinions—and our feet are hurtin’ –well really our brains from analyzing conflicting interpretations of administrative law—and all we want is for you to just let us be—able to amend claims in an IPR, that is. Apologies to everyone and Rolling Stones fans … No more Beast of Burden puns for the rest of the article.

The latest en banc decision from the Court of Appeals for the Federal Circuit (“CAFC”), Aqua Products v. Matal, can actually be summed up very simply: the CAFC vacated the PTAB’s final written decision denying patent owner Aqua Products’ motion to amend its claims and ordered the panel to reconsider the proposed substitute claims without placing the burden of persuasion on the patent owner. So, why did it take 148 pages to decide what could ultimately be summed up in less than 50 words? In a word? Bureaucracy.

To take slightly more words (but not 148 pages worth), the central conflict at the CAFC deals with the PTAB’s authority to implement the America Invents Act, and specifically those portions of the AIA that deal with implementing Inter Partes Review. A majority of the CAFC apparently believes the AIA is ambiguous with respect to which party bears the burden of proof on patentability of amended claims, despite the fact that §316(e) clearly states “petitioner shall have the burden of proving a proposition of unpatentability.” (emphasis added). However, in the face of an “ambiguous” statute, the next question to be resolved is whether the PTO adopted a specific rule or regulation assigning a burden of persuasion to the patent owner. A different majority of the CAFC concluded that the PTO failed to actually assign the burden in through an appropriate rulemaking process. Ironically, this majority consists primarily of the minority that found the statute to be unambiguous in the first place, explaining the numerous conflicting plurality decisions.

So what happens next? For Aqua Products, the PTAB, as mentioned above, will reconsider the motion to amend without requiring the patent owner to affirmatively prove validity. If the PTAB wants to put the burden back onto the patent owner, the PTO director (most likely, incoming director Iancu) must initiate a formal rule making process, including providing notice and soliciting comments from the public. While commentators are sure to speculate as to the likelihood of Iancu taking such action, the results of such a process are far from certain. At least five members of the CAFC agree (with one member abstaining) that the AIA’s guidance is clear on this point: it is the petitioner that clearly has the burden of proving amended claims to be unpatentable, not the other way around. Hopefully, the patent owner’s burden is gone for good and will never, never, never, never, never, never, never be.

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