As we reported earlier, the en banc
Federal Circuit is currently considering two important questions
involving the PTO's rules for claim amendments and the
PTAB's handling of motions to amend during IPR proceedings,
In re: Aqua Products, Inc., 833 F.3d 1335 (Fed. Cir.
2016):
(1) 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)?
(2) 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?
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