May 25, 2016

Patent Owner Must Show Patentability Over Art of Record to Amend Claims in IPR

By Bryan K. Wheelock, Principal

In In re Aqua Products, Inc., [2015-1177] (May 25, 2016), the Federal Circuit affirmed the PTAB’s denial of the patent owner’s motion to amend in IPR2013-00159.

The Federal Circuit made quick work of the PTAB’s placing the burden on the patent owner to show patentability over all of the prior art of record, holding it was bound by precedent.

The Federal Circuit also found no abuse of discretion in the Board’s failure to evaluate objective indicia of non-obviousness and various new limitations in the proposed claims, because Aqua did not argue that those indicia and limitations distinguish the proposed claims over the prior art.  The PTAB’s obligation with respect to motions to amend is limited to considering
only those arguments that the patent owner actually raises,   The Federal Circuit said that to hold otherwise would require the Board to fully reexamine the proposed claims in the first instance, effectively shifting
the burden from the patentee to the Board.  The Federal Circuit said that consideration of a motion to amend in compliance with the APA only requires
that the Board show that it fully considered the particular arguments raised by the patentee and that it provided a reasoned explanation for why those arguments were unpersuasive.