The Federal Circuit has granted rehearing en banc in In re Aqua Products, Inc. to address two issues related to amending claims in inter partes review proceedings before the Patent Trial and Appeal Board:

(a) When the patent owner moves to amend its claims under 35 U.S.C. § 316(d), may the PTO require the patent owner to bear the burden of persuasion, or a burden of production, regarding patentability of the amended claims as a condition of allowing them? Which burdens are permitted under 35 U.S.C. § 316(e)?

(b) When the petitioner does not challenge the patentability of a proposed amended claim, or the Board thinks the challenge is inadequate, may the Board sua sponte raise patentability challenges to such a claim? If so, where would the burden of persuasion, or a burden of production, lie?

The panel had upheld the Patent Office’s regulations that place the burden of proof on the patentee, citing prior decisions in Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1307-08 (Fed. Cir. 2015), Prolitec, Inc. v. ScentAir Techs., Inc., 807 F.3d 1353, 1363 (Fed. Cir. 2015), and Nike, Inc. v. Adidas AG, 812 F.3d 1326, 1333−34 (Fed. Cir. 2016), which had determined that the PTO’s regulations are consistent with the statutory framework.

The en banc court set the oral argument date for December 9, 2016, with briefing to occur in October and November.

The Federal Circuit’s en banc order can be accessed here, and the panel’s prior decision is published at 823 F.3d 1369 and available here.