Inter Partes Review (Ipr) in Case No Ipr 2017-01243

The patent bar watched the en banc rehearing decision in Aqua Products Inc. 5. Matal, 872 F.3d 1290 (Fed. Cir. 2017), with great interest. This was because the lack of availability to amend claims in an inter partes review has frustrated patent owners and was a somewhat unanticipated consequence of the America Invents Act. When the AIA was enacted in 2012, many practitioners expected post-grant proceedings amendment practice to be available and quite similar to pre-AIA re-examination practice. This expectation was founded in the statutory language and past do. The AIA states in Section 316(d)(1) of the Patent Deed, 35 UsaC.A. § 316(d)(1), that "the patent possessor may file ane motion to amend the patent." Furthermore, IPR and postal service-grant review proceedings were intended to replace inter partes re-examinations to review the patentability of patent claims. Standard inter partes re-examinations—and ex parte re-examinations—allowed the patent owner to improve claims.

Still, the Patent Trial and Appeal Board's arroyo in postal service-grant proceedings since the AIA was enacted has severely restricted motions to amend past substituting claims.

Through regulations and decisions, the PTAB set forth ground rules for IPR amendment practice. The statute authorizes the Patent and Trademark Role to promulgate rules relating to motions to amend in Section 316(a)(9) of the Patent Deed, 35 The statesC.A. § 316(a)(ix). The PTO did and so in 37 C.F.R. §42.121, requiring that the motion to meliorate:

• Respond to a ground of unpatentability.
• Avoid enlarging the scope of the claims.
• Avert introducing new subject matter.
• Propose merely a reasonable number of substitute claims.
• Show written description support for every alter in the original disclosure of the patent.

Through its decisions, and in reliance on a general procedural regulation placing the brunt of proof on the moving political party to establish entitlement to the relief requested, the PTAB further established that the burden to show patentability of the proposed substitute claims was on the patent owner.

Aqua Products

In Zodiac Pool Systems Inc. 5. Aqua Products Inc., No. IPR2013-159, 2014 WL 4244016 (P.T.A.B. Aug. 22, 2014), the PTAB held all instituted claims unpatentable for apprehension and obviousness and denied Aqua's move to amend proposing three substitute claims. Although the PTAB found the substitute claims complied with Section 316(d) and 37 C.F.R. §42.121(a), it was "not persuaded that patent owner has demonstrated the patentability of the proposed substitute claims over a ground of unpatentability involving Henkin and Myers." Co-ordinate to the PTAB, the rule relating to motions to improve and the general rule assigning the burden to movants placed the burden on the patentee to bear witness that the proposed amendments would make the claims patentable over the known prior art.¹

On appeal, a panel of the U.S. Court of Appeals for the Federal Circuit affirmed the PTAB decision. In re Aqua Products, 823 F.3d 1369 (Fed. Cir. 2016). The Federal Circuit had previously and repeatedly upheld the PTAB'southward approach to motions to amend.^twoThe panel in Aqua Products concluded, therefore, "Given our precedent, this console cannot revisit the question of whether the board may crave the patentee to demonstrate the patentability of substitute claims over the fine art of record."

The court granted a request for en banc rehearing in In re Aqua Products, 833 F.3d 1335 (Fed Cir. 2016), to specifically accost the burden on a patent owner that moves to improve its claims nether Section 316(d) of the Patent Act.³

The en banc court delivered its opinions inAqua Products Inc. v. Matal, 872 F.3d 1290 (Fed. Cir. 2017). Gauge Kathleen O'Malley wrote a plurality opinion. Four of the xi judges on the console joined in the opinion, and two others concurred every bit to the outcome it reached. In that stance, the court held that, under the PTO'south current rules and rule-making history, the agency may non place the burden of persuasion regarding the patentability of proposed amended claims on the patent owner:

The merely legal conclusions that support and define the judgment of the court are: the PTO has non adopted a rule placing the brunt of persuasion with respect to the patentability of amended claims on the patent owner that is entitled to deference; and in the absence of annihilation that might be entitled deference, the PTO may not place that brunt on the patentee.^iv

The court expressly overruled opposite Federal Circuit precedent as follows: "To the extent our prior decisions in Microsoft Corp. v. Proxyconn Inc., 789 F.3d 1292 (Fed. Cir. 2015); Prolitec Inc. 5. ScentAir Technologies Inc., 807 F.3d 1353 (Fed. Cir. 2015)…; Synopsys Inc. v. Mentor Graphics Corp., 814 F.3d 1309 (Fed. Cir. 2016); and Nike Inc. v. Adidas AG, 812 F.3d 1326 (Fed. Cir. 2016), are inconsistent with this conclusion, we overrule those decisions."⁵

It as well addressed PTAB precedent, saying ii of the PTO's previous decisions "do not alter our determination that the PTO's regulations exercise non speak to either Section 316(due east) or the ultimate burden of persuasion regarding patentability."

5 judges concluded that the statutory scheme is unambiguous, proverb it does non identify the burden of proving the patentability of amended claims on the patent possessor. Those 5 judges also concluded that in that location is no PTO rule identifying which party has the burden to prove patentability of proposed substitute claims. Without a rule, there could be no ground for Chevron deference.⁶They also rejected the statement that 37 C.F.R. §42.20(c), the general rule placing the burden on movants, applies to a patent owner'due south motion to ameliorate claims under Section 316(e) of the Patent Act.

Vi more judges said the statute is ambiguous, only they disagreed on whether the PTO interpretation deserved deference.

Two of those six, Judges Timothy B. Dyk and Jimmie V. Reyna, believed it did not, which, when added to the five who believed the statute was unambiguous, provided a plurality of seven agreeing to discard the PTO interpretation without deference.

The plurality of seven judges vacated the original PTAB conclusion, concluding "that the board erred when it imposed the brunt of proving the patentability of its proposed substitute claims on Aqua." The instance was remanded "for the board to issue a final conclusion under Section 318(a) assessing the patentability of the proposed substitute claims without placing the brunt of persuasion on the patent possessor." The court farther instructed the lath to follow the same practice "in all pending IPRs unless and until the managing director engages in notice and comment rule-making."

The en banc decision in Aqua Products appears to leave open up the possibility that the PTO could promulgate a rule placing the burden on the patent possessor or petitioner.

The Federal Circuit would and so review that rule to determine if it should be accorded Chevron deference.

Post-Aqua Guidance from the PTO

On Nov. 21, 2017, the PTO issued guidance on motions to improve in view of Aqua Productsas a memo from so-Primary Patent Judge David Ruschke to the PTAB.

According to the guidance, "In light of the Aqua Products decision, the lath will not place the brunt of persuasion on a patent possessor with respect to the patentability of substitute claims presented in a motility to amend."

Notably, the guidance does not squarely allocate the burden of persuasion. Instead, if a patent possessor files a motion to better meeting the statutory requirements of Department 316(d) and the regulatory requirements of 37 C.F.R. §42.121, "the board will proceed to determine whether the substitute claims are unpatentable by a preponderance of the bear witness based on the entirety of the record, including any opposition made by the petitioner."

That is, the PTAB will place all bear witness of patentability and unpatentability on the calibration. If the evidence tips toward unpatentability, the motility to amend will be denied. If it tips toward patentability, the motion volition exist granted. And if it is "in equipoise as to the unpatentability," the move volition be granted. In other words, a necktie goes to the patent possessor.

The guidance seems to exist an attempt to: follow Aqua, as the PTO must; avoid expressly assigning the burden on the petitioner or the patent possessor in favor of evaluating unpatentability based on "the entirety of the record"; provide some guidance to PTAB judges and practitioners; and preserve the PTO's futurity rule-making options left open past Aqua.

Post-Aqua at the PTAB

Several instituted IPRs were pending when the en banc panel delivered the Aqua determination. Patent owners acted to accost the alter brought nigh past the decision. Supplemental briefing was authorized in several cases, though the specifics of each case vary in terms of how many pages were allowed per brief and whether a sur-reply was also authorized.^viiAn exception was Samsung Electronics Co. Ltd. five. Rosetta-Wireless Corp., No. IPR2016-00622, 2017 WL 4799775 (P.T.A.B. Oct. twenty, 2017), where the PTAB denied the patent owner's request to file a motion to amend in calorie-free of Aqua Products. In Samsung, the final written determination issued Aug. 21, 2017, and the patent owner had non filed a motion to amend during the trial.

So far, post-Aqua motions take produced mostly negative results for patent owners.In Minerva Surgical Inc. v. Hologic Inc., No. IPR2016-00868, 2017 WL 6404966 (P.T.A.B. December. 15, 2017), the PTAB concluded that while the motion met all the requirements of Department 316(d) and 37 C.F.R. §42.121, the proposed substitute claims were "unpatentable by a preponderance of the evidence based on the entirety of the record." In Semiconductor Components Industries LLC v. Power Integrations Inc., No. IPR2016-01589, 2018 WL 922378 (P.T.A.B. Feb. 14, 2018), the PTAB denied a move to amend for unpatentability of the proposed substitute claims without any discussion of burden. In Taiwan Semiconductor Manufacturing Co. v. Godo Kaisha IP Bridge1, No. IPR2016-01249, 2017 WL 6541530 (P.T.A.B. December. twenty, 2017), the PTAB granted i substitute claim and denied ii proposed substitute claims as unpatentable for obviousness based on the "entirety of the record." In Cisco Systems Inc. v. Focal IP LLC, Nos. IPR2016-01254 and IPR2016-01257, 2017 WL 6611482 (P.T.A.B. Dec. 27. 2017), the PTAB denied the patent possessor's proposed substitute claims for failure to bear witness written clarification support in the originally filed disclosure. In Prime Focus Creative Services Canada Inc. v. Legend3d Inc., No. IPR2016-01243, 2017 WL 6503413 (P.T.A.B. Dec. eighteen, 2017), the PTAB did not achieve the consequence of patentability because it ended the patent owner's proposed amendments would "impermissibly introduce new affair and enlarge the scope of [the] claims."

An exception to the mostly negative continued handling of motions to amend is the conclusion in Apple Inc. v. Realtime Data LLC, No. IPR2016-01737, 2018 WL 1326656 (P.T.A.B. Mar. 13, 2018), in which the PTAB granted Realtime's contingent motion to amend. After finding that the patent owner's proposed substitute claims satisfied the procedural requirements of 37 C.F.R. § 42.121, the PTAB went on to note that, under Aqua Products, the patent possessor "does not have the burden of persuasion with respect to the patentability of the substitute claims presented," and the standard for its analysis would be "whether the substitute claim is unpatentable by a preponderance of the evidence based on the entirety of the record, including whatsoever opposition fabricated by the petitioner," the standard fix forth in the director'due south guidance. The PTAB went through each of the asserted obviousness grounds in the context of the proposed substitute claims and concluded that the petitioner "fail[ed] to establish that proposed substitute claims 118–173 are obvious." In item, the PTAB held that the asserted references failed to "teach or suggest" the proposed substitute claim limitations and said the petitioner did not explicate why an ordinarily skilled person would have combined the references to get in at the claimed invention.

In postal service-Aqua IPR submissions, some patent owners are hedging their bets by arguing patentability while emphasizing that the petitioner has the burden. Examples include Intel Corp. v. R2 Semiconductor Inc., No. IPR2017-00705, motion to meliorate filed, 2017 WL 6335866 (P.T.A.B. Dec. 11, 2018). Other patent owners are noting that its just burden, one of production, is met, and reserving patentability arguments until the petitioner has met its burden of persuasion. Apotex Inc. v. Novartis AG, No. IPR2017-00854, movement to meliorate filed, 2017 WL 5472688 (P.T.A.B. Nov. 13, 2017). In Askelladen LLC v. Verify Smart Corp., No. IPR2017-00726, movement to amend filed, 2017 WL 6209751 (P.T.A.B. Nov. twenty, 2017), the patent owner went and then far as to country that Aqua Products overruled the requirement of 37 C.F.R. § 1.121(a)(2)(i) for the patent owner to evidence the amendment responds to a ground of unpatentability.

In Westinghouse Air Brake Engineering Corp. v. Siemens Industry Inc., No. IPR2017-00580, motion to improve filed, 2017 WL 4712280 (P.T.A.B. Oct. xx, 2017), the patent owner filed a movement to ameliorate—after Aqua Products—containing two sets of proposed substitute claims: one if the challenged claims are entitled to the asserted priority appointment, one if not. Co-ordinate to the patent possessor, both sets are narrowing, do not introduce new affair, take written description support, and are patentable.

In Controls Southeast Inc. v. QMax Industries LLC, No. IPR2017-00977, motion to amend filed, 2017 WL 6505527 (P.T.A.B. Dec. 19, 2017), the patent owner'due south contingent movement to amend relied heavily on the Aqua decision in arguing its amendment should be granted because it "is sufficiently narrower than the challenged merits to overcome the grounds of unpatentability upon which the IPR was instituted."

Post-Aqua at the Federal Excursion

Silver Peak Systems Inc. v. Matal provides an example of an appeal that was pending at the Federal Excursion when Aqua Productswas decided.Riverbed Engineering Inc. v. Silverish Peak Systems Inc., No. IPR2014-00245, 2015 WL 3638276 (P.T.A.B. June nine, 2015), the PTAB denied a motion to better proposing substitute claims because the patent owner had not "met its burden of proof to demonstrate patentability of its proposed substitute merits[south] … over the prior art." The courtroom in Argent Peak Systems Inc. v. Matal, 698 F. App'ten 1036 (Fed. Cir. 2017), issued an opinion vacating and remanding the decision for farther proceedings consistent with Aqua Products.^viii

In Bosch Automotive Service Solutions LLC five. Matal, 878 F.3d 1027 (2017), the Federal Circuit also vacated and remanded a denial of proposed substitute claims for evaluation of patentability in accordance with Aqua Products. In Autel U.South. Inc. 5. Bosch Automotive Service Solutions LLC, No. IPR2014-00183, 2015 WL 2149218 (P.T.A.B. May 5, 2015), the PTAB constitute the proposed apparatus claims were indefinite and that the patent owner had failed to carry its burden of proof to testify patentability of the proposed substitute claims.

The limited holding of Aqua Products was that no PTO rule expressly placed the burden on the patent owner to show patentability of proposed substitute claims and the PTAB'due south practice of doing so was impermissible. Moreover, the director's guidance places no burden of persuasion on the patent owner. Nor does information technology expressly place the burden on the petitioner. But in Bosch, a precedential determination written past Judge Raymond Chen and joined by Judges Pauline Newman and Todd K. Hughes, the Federal Excursion panel unequivocally said the petitioner has the brunt of proving unpatentability of amended claims, citing Section 316(e) as back up:

In Aqua Products Inc. v. Matal, this courtroom recently ruled that the patent owner does not bear the brunt of proof on the patentability of its proposed amended claims. … Rather, the petitioner bears the burden of proving that the proposed amended claims are unpatentable by a preponderance of the evidence. 35 U.s.a.C.A. § 316(e). This burden of proof allotment applies for questions of indefiniteness, as with other questions of unpatentability.

Information technology is interesting that the author of Bosch, Judge Chen, was 1 of the judges who would have affirmed in Aqua Products, finding Section 316(e) ambiguous and supporting deference to the PTO practice of assigning the burden of persuasion to the patent owner. Perhaps Bosch is where a majority of the court currently stands on the event: that, as Judge O'Malley wrote in Aqua Products, "the most reasonable reading of the AIA is one that places the burden of persuasion with respect to patentability of amended claims on the petitioner."^ix

The Bosch console's statement and citation to Section 316(due east) as the ground for placing the burden of proving unpatentability on the petitioner will impact future cases and the PTO'southward flexibility in future rule-making. In fact, the PTO petitioned for rehearing February. 5, 2018, seeking to better the statement to remove the citation to Department 316(e)^ten and change the statement placing the brunt on petitioner equally follows:

In Aqua Products, this court recently ruled that the patent owner does not bear the burden of proof on the patentability of its proposed amended claims. 872 F.3d 1290 (Fed. Cir. 2017). Every bit a event, the petitioner or agency must bear the brunt of proving that the proposed amended claims are unpatentable "by a preponderance of the evidence."

These changes to the Bosch decision sought by the PTO would preserve the view of a bulk of the judges in Aqua that Section 316(e) is ambiguous, create less conflict with the contempo director'south guidance not expressly placing the brunt on petitioner, and provide more than flexibility for the PTO in future rule-making.

Intervening Rights Arising from Granted Substitute Claims

The result of intervening rights may arise more frequently if more amendments are granted in IPRs. Section 318 (c) of the Patent Act, 35 U.S.C.A. § 318(c), provides that intervening rights have the aforementioned issue in IPRs as they practise in reissued patents. As the commune court found in Longitude Licensing Ltd. five. Apple Inc., No. fourteen-CV-04275-EDL, 2015 WL 12778777 (N.D. Cal. October. 29, 2015), "arguments in favor of the claims and claim amendments fabricated during PTAB proceedings could institute a basis for intervening rights, thus limiting damages for the claims that survive IPR."

Drafting and Prosecuting to Minimize Need to File Movement to Ameliorate

Consider keeping awarding pending
Maintaining pending continuation applications has long been a recommended exercise to protect the patent applicant'southward invention while the scope of such protection is being adamant.Aqua Products does not change that recommendation, despite removing the burden of persuasion on patent owners in motions to improve. If the PTAB does not let the patent owner to enter a particular proposed substitute claim during an IPR or post-grant review, such discipline matter can still be pursued in a pending family unit fellow member, assuming the subject area affair of the proposed substitute merits is patentably distinct from whatsoever claims canceled past the PTAB. The PTAB has held that prosecution of a continuation application does not have to be stayed during an IPR. Air-conditioning Dispensing Equip. Inc. v. Prince Castle LLC, No. IPR2014-00511, decision issued (P.T.A.B. October. 17, 2014).

Of course, the exercise of maintaining continuation applications cannot exist unreasonable, and the cases of Tafas v. Doll, 559 F.3d 1345 (Fed. Cir. 2009); In re Bogese, 303 F.3d 1362 (Fed. Cir. 2002); and Symbol Applied science Inc. v. Lemelson Medical, Educational & Research Foundation, 422 F.3d 1378 (Fed. Cir. 2005), stand every bit a warning in that regard.

Solid evidentiary showings,declarations
Solid evidentiary showings and peradventure declarations, in addition to on-point legal arguments, may aid to develop strong patentability records that will help claims withstand both authoritative and judicial challenges. Consider presenting declarations supporting Department 112 positions, written description and enablement, and Department 103 positions for nonobviousness. Past prudently establishing such records during prosecution, a patent possessor has a strong basis from which to persuade the PTAB that the petitioner does not have a "reasonable likelihood" of success and thus achieve denial of institution. Of class, declarations ever require conscientious consideration of Therasense Inc. v. Becton, Dickinson & Co., 649 F.3d 1276 (Fed. Cir. 2011), including careful idea and planning to minimize chances that the patent owner will lose the patent on a theory of caitiff comport or unclean hands.

Full range of fully supported claims
Including several claims of varying claim telescopic in the patent application increases the likelihood that ane or more of them will survive in a subsequent IPR proceeding without any need to better. Ideally, the original claim fix should include both broad and narrow claims. The narrower claims will provide the strongest patentability position during both prosecution and subsequent IPR proceedings. The broader claims can offer context for claim interpretation of the narrower claims. They can also protect the invention from design-around variants, enhancing the value of the patent in district court litigation.

Mail service-Aqua IPR and PGR Practice

Post-Aqua, volition more motions to improve be granted? It is likewise early to say. In that location has non been a blitz of decisions granting proposed substitute claims so far. The number of denials based on a patent possessor's failure to meet its burden of production set forth in Section 326(d) of the Patent Deed, 35 U.Southward.C.A. § 326(d), and 37 C.F.R. § 42.121 will non change.

Furthermore, information technology is possible that 37 C.F.R. §42.121(a)(2)(i), which addresses a failure to respond to a footing of unpatentability involved in the trial, may muddy the waters of a patent owner's still-existing burden of production. Will 37 C.F.R. §42.121(a)(ii)(i) merely become a substitute ground for rejecting patent owner's motions to meliorate, thereby leaving motion to amend practice in its current weak state? Even if the burden of persuasion is not placed on the patent owner, if the burden of coming forward with evidence is placed on the patent possessor, equally a practical matter future decisions could conclude the patent owner failed to come frontwards with sufficient evidence of patentability while stating the petitioner bears the brunt of persuasion.

Further, every bit in Power Integrations future decisions may continue to pass up amended claims while remaining silent on who has the brunt. Or, as in Parrot SA five. QFO Labs Inc., Nos. IPR2016-01550 and IPR2016-01559, 2018 WL 922374 (P.T.A.B. Feb. 15, 2018), future decisions may deny motions to amend citing the "entirety of the record," the linguistic communication of the managing director'due south guidance.

Will the PTO go through formal rule-making to explicitly place the burden on the patent owner or the petitioner to show patentability of proposed substitute claim(s)? Maybe, butBosch as it currently reads seems to limit the PTO'southward rule-making flexibility to promulgate a rule placing the burden on the patent owner. Even if rules are proposed, they may not be finalized for several months. Afterwards that, those rules could face—and fail—Federal Excursion scrutiny.

It will also exist important for practitioners to monitor the condition of Chevron deference in light of the pending U.South. Supreme Courtroom ruling in SAS Institute Inc. v. Matal, No. 16-969, oral statement held, 2017 WL 5680366 (U.S. Nov. 27, 2017), and the status of the constitutionality of AIA post-grant proceedings in lite of another awaiting ruling in Oil States Free energy Services LLC 5. Greene's Energy Grouping LLC et al., No. 16-712, oral argument held, 2017 WL 5680363 (U.Southward. November. 27, 2017).

When filing a motion to meliorate, a patent owner should consider filing it as a contingent motion, which is contingent on the original claims being held unpatentable, and still should substantively debate patentability of the original claims in the patent owner'southward response. If the motion is non contingent, patent owners may get caught when requesting concomitantly cancellation of claims and assart of substitute claims without arguing patentability of original challenged claims. The request to cancel may well be granted and the request to allow substitute claims denied, leaving patent owner with no claims. For an case, see Facebook Inc. 5. EveryMD LLC, No. IPR2014-00242, 2015 WL 2268210 (P.T.A.B. May 12, 2015), where the patent owner did not specify that the motility to amend was contingent on the instituted claims beingness held unpatentable. The PTAB, without whatsoever discussion of patentability arguments, granted the request to cancel and denied the proposed substitute claims for failure of the patent owner to demonstrate patentability.

Endnotes
^one See Idle Complimentary Sys. Inc. five. Bergstrom Inc., No. IPR2012–00027, 2013 WL 5947697 (P.T.A.B. June eleven, 2013); MasterImage 3D Inc. v. RealD Inc., No. IPR2015-00040, 2015 WL 10709290 (P.T.A.B. July 15, 2015).

^two Microsoft Corp. v. Proxyconn Inc., 789 F.3d 1292 (Fed. Cir. 2015), Prolitec Inc. v. ScentAir Techs. Inc., 807 F.3d 1353; Nike Inc. 5. Adidas AG, 812 F.3d 1326 (Fed. Cir. 2016). All were overruled by Aqua Products Inc. v. Matal, 872 F.3d 1290 (Fed. Cir. 2017).

^three The 2 questions presented were: "(a) When the patent owner moves to amend its claims under 35 United statesC.A. § 316(d), may the PTO require the patent possessor to bear the burden of persuasion, or a burden of product, regarding patentability of the amended claims every bit a condition of assuasive them? Which burdens are permitted nether 35 U.South.C.A. § 316(eastward)? (b) When the petitioner does not claiming the patentability of a proposed amended merits, or the board thinks the claiming is inadequate, may the lath sua sponte raise patentability challenges to such a claim? If and then, where would the burden of persuasion, or a burden of production, lie?" The en banc decision did not answer the 2nd question.

⁴ The remaining iv judges would take affirmed the PTAB's decision.

⁵ In Prolitec, at that place was a petition for rehearing awaiting at the time of the Aqua Products en banc decision. In light of the en banc determination in Aqua Products, the Federal Circuit granted Prolitec'southward petition for rehearing en banc, vacated the panel opinion and the PTAB's conclusion, and remanded the case. Prolitec Inc. v. ScentAir Techs. Inc., No. 2015-1020, gild issued (Fed. Cir. Oct. 18, 2017).

⁶ Chevron U.S.A. Inc. v. Natural Res. Def. Council Inc., 467 U.Due south. 837 (1984).

^seven Run into Minerva Surgical Inc. five. Hologic Inc., IPR2016-00868, 2017 WL 4804517 (P.T.A.B. Oct. 23, 2017).

⁸ Note that on remand for reconsideration under Aqua, PTAB standard operating process 9 (SOP 9) will besides apply. SOP ix, Process for Decisions Remanded from the Federal Circuit for Further Proceedings, provides guidance for panels and parties in terms of a schedule and actions for proceeding with the remand. The stated goal is to consequence PTAB decisions on remanded decisions inside 6 months of the Federal Circuit final judgment.

^ix Aqua Products, 872 F.3d 1290.

¹⁰ The PTO pointed out that a bulk of judges in Aqua Products (Prost, Dyk, Reyna, Taranto, Chen and Hughes) found that Department 316(eastward) is ambiguous as to the brunt of persuasion for amended claims. The patent owner's response was filed Feb. 26, 2018. The response briefly opposed the suggested revision: "The panel should deny the petition for panel rehearing. The panel opinion evidently adopts the atomic number 82 stance of the court in Aqua Products. … To the extent some of the judges found 35 U.s.a.C.A. Section 316(due east) ambiguous, the panel stance in this matter resolved the ambiguity." The case is now captioned Robert Bosch LLC v. Iancu to reflect the appointment of the new director of the PTO, Andrei Iancu.

*Stacy Lewis is a police clerk at Finnegan.

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Source: https://www.finnegan.com/en/insights/articles/how-the-ptab-and-federal-circuit-have-responded-to-aqua-products.html

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