On November 21, 2017, PTAB Chief Judge Ruschke issued a memorandum entitled "Guidance on Motions to Amend in view of Aqua Products."  As we reported at the time, the Federal Circuit in Aqua Products determined that the PTAB can no longer place the burden of establishing the patentability of amended claims on the patent owner in IPR proceedings.  However, that en banc Court was highly fractured, with five separate opinions joined by differing collections of judges.  Therefore, most of the opinion could be described as "cogitations," as Judge O'Malley had put it.  In fact, the Aqua Products decision only contained two legal conclusions:

• "[T]he PTO has not adopted a rule placing the burden of persuasion with respect to the patentability of amended claims on the patent owner that is entitled to deference"; and

• "[I]n the absence of anything that might be entitled to deference, the PTO may not place that burden on the patentee."

Correspondingly, Chief Judge Ruschke's guidance flowing from these conclusions was that "the Board will not place the burden of persuasion on a patent owner with respect to the patentability of substitute claims presented in a motion to amend."

Of course, the more important question was how this change would be implemented by the Board.  Interestingly, the guidance suggests that, other than the fact that motions to amend will now be granted when the "entirety of the evidence of record before the Board in in equipoise as to the unpatentability of one or more substitute claims," "practice and procedure before the Board will not change."  Therefore, a patent owner must still meet the requirements for amending the claims as found in 37 C.F.R. § 42.121 (or § 42.211 for PGR proceedings), including only proposing a reasonable number of substitute claims, not enlarging the claim scope or introducing new matter, and making the claim amendments responsive to a ground of unpatentability involved in the trial.  Moreover, the Chief Judge reminded patent owners (as well as petitioners) that they have a duty of candor and good faith to the Office during the proceedings, pursuant to 37 C.F.R. § 42.11.  Correspondingly, patent owners have a duty to disclose information of which they are aware that would be material to the patentability of any substitute claims.

With regard to how motions to amend will be handled procedurally, Chief Judge Ruschke also indicated that nothing will change.  Therefore, the rules regarding types, timing, and page limits for briefs will not change.  In addition, the standard Scheduling Order will continue to provide that patent owners may file motions to amend on Due Date 1.  And not surprisingly, patent owners are still required to confer with the Board before filing a motion to amend as provided by 37 C.F.R. §§ 42.121(a), 42.221(a).

So what about situations in which trial has already been instituted?  If the proceeding is still before Due Date 1, nothing will really change, although patent owners are advised to contact the Board if they have any questions on briefing.  If Due Date 1 has past and a patent owner wishes to introduce new or substitute claims, they are urged to "contact the Board to arrange a conference call as soon as reasonable possible."  Of course, it is unclear how successful a patent owner will be in such situations, but certainly the closer the date is to Due Date 1, the better the chances will most likely be.  Finally, in cases in which a motion to amend is pending, Chief Judge Ruschke advises parties to contact the Board to arrange a conference call should they have any need to discuss the impact of the Aqua Products decision.  In fact, he indicated that the Board has already contacted such parties, and will continue to do so, to let them know that a request for conference call if desired is appropriate.  During this call, the parties are permitted to request changes to the briefing schedule, and the Board will generally permit supplemental briefing to address patentability of substitute claims if requested.

We will continue to monitor the PTAB for how the Aqua Products case has impacted motion-to-amend practice, and whether that decision resulted in any significant change for patent owners, and we will provide updates as warranted.