On October 4, 2017, the Federal Circuit, sitting en banc, issued its long-awaited decision in Aqua Products, Inc. v. Matal. Appeal No. 2015-1177. The court was fractured in its analysis, issuing five opinions. Seven judges, a majority of the en banc court, determined that the Patent Trial and Board (PTAB) improperly places the burden of persuasion on patent owners in inter partes review (IPR) proceedings to prove that proposed substitute claims submitted with a motion to amend are patentable.
However, the majority of judges could not reach consensus on why the PTAB’s practice of requiring patent owners to have the ultimate burden of persuasion in motions to amend is improper. Judge O’Malley emphasized that the court’s decision was “narrow.” The court vacated the PTAB’s final written decision insofar as it denied the patent owner’s motion to amend, and remanded the case to the PTAB to assess the patentability of the proposed substitute claims without placing the burden of persuasion on the patent owner.