On November 21, the U.S. Patent and Trademark Office (USPTO) issued guidance on motions to amend during inter partes review before the Patent Trial and Appeal Board (PTAB). This guidance comes in the wake of the recent Federal Circuit decision in Aqua Products, Inc. v. Matal, 872 F.3d 1290 (Fed. Cir. 2017). In the Aqua Products decision, the Federal Circuit determined that the USPTO may not place the burden of persuasion with respect to the patentability of amended claims on the patentee. Aqua Prods., 872 F.3d at 1327.
The memo issued by PTAB Chief Judge Ruschke indicates that the PTAB will evaluate a motion to amend that meets the procedural requirements of 35 U.S.C. §316(d) "to determine whether the substitute claims are unpatentable by a preponderance of the evidence based on the entirety of the record, including any opposition made by the petitioner." Where the PTAB is "in equipoise as to the unpatentability of one or more substitute claims," the PTAB will grant the motion to amend, and the claims will be incorporated into the patent at issue. All other practices and procedures before the PTAB will not change. Thus, a patent owner must still meet the requirements of 37 C.F.R. § 42.121 or § 42.221, as applicable.
Finally, the memo invites any party in a matter involving a pending motion to amend that may be impacted by Aqua Products to contact the Board to arrange a conference call. The PTAB is currently contacting parties with pending motions to amend at the time the Aqua Products decision issued.