We asked for an impartial PTAB for Christmas. Did the CAFC deliver what the PTAB refused?
by: Patrick Anderson | December 28, 2017
Back in October, we reported on the split en banc opinion of the Court of Appeals for the Federal Circuit (“CAFC”) in Aqua Products v Matal, which narrowly decided that the Patent Trial and Appeal Board (“PTAB”) cannot force patent owners to prove their amended claims are affirmatively patentable during an Inter Partes Review (“IPR”).
As IPWire noted, the PTAB must:
“reconsider the motion to amend without requiring the patent owner to affirmatively prove validity,” but the decision was ultimately inconclusive about who should bear the burden of proof.”
The PTAB then reviewed Aqua Products and concluded in a memorandum from Chief Judge David Ruschke, similarly, that the only definitive legal conclusion reached is that “the PTO may not place that burden on the patentee.” Now, a fair and balanced organization might recognize that there is but one other party to an IPR proceeding, and the logical conclusion would be to then assign the burden of proof to said other party.
But, alas, this is the PTAB (See: Sovereign Immunity Patent Crowd Not To Have a Happy Holiday: PTAB Rules 11th Amendment Protections Waived, or All I Want for Christmas is an Impartial PTAB, or What we all Got Wrong in the PTAB Sovereign Immunity Decision).
Instead, the Ruschke’s memorandum blatantly ignores the one clear holding in Aqua, and proclaims that “generally speaking, practice and procedure before the Board will not change.” In a blatant attempt to maintain the pre-Aqua status quo without the required rule making process, Ruschke proclaims that “the Board will proceed to determine whether the substitute claims are unpatentable by a preponderance of the evidence.”
Mercifully, a unanimous 3-judge panel of the CAFC (specifically, Newman, Chen, and Hughes) gave patent owners an early Christmas gift in Bosch Automotive Service v Matal (decided Dec. 22, 2017) and eliminated the ambiguity Ruschke seized upon. On page 22 of the slip opinion, the panel clearly and unequivocally holds that:
“the petitioner bears the burden of proving that the proposed amended claims are unpatentable ‘by a preponderance of the evidence.”
The holding in Bosch should now be respected as the final word, since Aqua failed to actually decide this issue and only a majority of an en banc panel can overturn this holding. However, as we pointed out in October, at least 5 members of the Aqua en banc panel already agree that the America Invents Act unambiguously places the burden on the petitioner.
Perhaps, finally, the PTAB will get the point that §316(e) means what it says, and revise its procedures accordingly.