We recently noted that the U.S. Patent and Trademark Office appears to have taken the position that neither party has the burden of persuasion with regard to Motions to Amend after the Aqua Products v. Matal decision.  Certainly, the Patent Owner no longer has the burden, as that is one of the only conclusions that can be ascertained from that en banc decision.  However, in no circumstance has the Board expressed the opposite conclusion that the burden falls on the petitioner.  Instead, everything that has come from the Chief Judge or the Board suggests that the Patent Office has taken a third approach -- that neither party currently has the burden.  As a case in point, the Patent Office filed its Intervenor's Petition for Panel Rehearing last month in Bosch Automotive Service Solutions, LLC v. Matal.  As we noted at the time, the Office was not asking the Federal Circuit to alter its judgment in that case.  Rather, it believed that the panel decision incorrectly stated the holding of Aqua Products.  The Federal Circuit last week granted the petition for the limited purpose of amending the earlier opinion.  However, the new opinion still might not be completely to the Patent Office's liking.

Before granting the petition for this limited purpose, the Federal Circuit had requested a response from Bosch Automotive, to which Bosch asserted that the petition should be denied.  In so doing, it said that "[t]o the extent some of the judges [in Aqua Products] found 35 U.S.C. Section 316(e) ambiguous, the panel opinion in this matter resolved the ambiguity."  The Federal Circuit took this as evidence that the original "opinion could be improperly misread."  Therefore, it amended the sentence:

Rather, the petitioner bears the burden of proving that the proposed amended claims are unpatentable "by a preponderance of the evidence."  35 U.S.C. § 316(e).

to read instead:

Rather, the petitioner bears the burden of proving that the proposed amended claims are unpatentable "by a preponderance of the evidence."

Obviously, this still is a pronouncement from the Federal Circuit that the petitioner now bears the burden in Motions to Amend, and any suggestion from the Office to the contrary will need to be revised.  However, it does remove the citation to the statute.  As such, it removes any suggestion that the Court believes that the statute is unambiguous.  Correspondingly, should the Office choose to promulgate rules to shift the burden back to the Patent Owner (as Aqua Products suggests it can), then it could be entitled to Chevron deference (which wouldn't be the case if the statute were unambiguous).

As a result, we are still left guessing whether the Patent Office intends to promulgate such a rule, but the pathway forward appears clearer than it did (if the Office show chooses).  Perhaps newly confirmed Director Iancu will provide some insight during his "Fireside Chat" at the 2018 PTAB Bar Association Conference in Washington D.C. on March 22, 2018.  According to the PTAB Bar, this will be the first time since he was named as Director that he addresses a formal gathering of lawyers who appear before the PTAB.  This author will be in attendance at the Conference, and looks forward to any clue that the new Director might suggest.  We will, of course, continue to monitor developments and report any updates in this space as warranted.