October 4, 2017

Matt Cutler Quoted in Patent Investor Article on Aqua Products Call

St. Louis patent attorney Matt Cutler was recently quoted in an article from The Patent Investor on the topic of the Court of Appeals for the Federal Circuit’s ruling in Aqua Products v. Matal. The article offers significant background and analysis on the matter, beginning with U.S. Patent No. 8.273,183 for a jet-propelled pool cleaner owned by Aqua Products. The patent was later the subject of IPR2013-00159 in which the Patent Trial and Appeal Board denied Aqua’s ability to amend its claims.

Lonkevitch claims that patent owners have complained since IPRs were first introduced that their inability to amend claims has been an unfair impediment to their ability to defend their patents. With the CAFC’s new ruling, however, patent owners may have a reason to be hopeful.

Explaining the stakes of the Aqua decision, Matt Cutler adds that only six IPR motions to amend claims were previously granted although there have been thousands of IPR proceedings. Furthermore, the statute and regulations only list three rather straightforward requirements for patent owners to make amendments valid:

  1. Non-broadening
  2. No new matter
  3. Relate to a ground in the IPR trial.

“Now, all the previous hurdles put in front of patent owners are gone,” Cutler says. “Meet the three above-listed requirements and the burden shifts to the petitioner to find new art, expert opinion, and/or other argument to prove the new claims are not patentable.”

Cutler goes on to call Aqua “a definitively pro-patent owner decision” and suggests that more amended claims should be expected to pass PTAB standards soon.

Read full article on The Patent Investor website.