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IP lawyer: Heavy burden lifted from patent owners’ shoulders – for now

By Nathan Mammen

The Federal Circuit’s ruling in Aqua Products serves as a short-term win for patent owners in inter partes review proceedings, but numerous long-term questions remain unanswered

On October 4 2017 the Court of Appeals for the Federal Circuit handed down its en banc opinion in Aqua Products Inc v Joseph Matal, addressing who has the burden of proof when a patent owner proposes amended claims in an inter partes review proceeding before the US Patent and Trademark Office (USPTO) Patent Trial and Appeal Board (PTAB). Perhaps the most remarkable aspect of the 148-page opinion is that – as the lead opinion states – “very little said… has any precedential weight”. The 11 judges splintered on basic questions of administrative law, resulting in a majority for the outcome, but no majority for the underlying reasoning. The court held that when a patentee in an inter partes review moves to amend claims, the burden is on the challenger to prove that the proposed amended claims are unpatentable. Beyond that, the Aqua Products decision creates more questions than it answers.

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