The Board authorized petitioner Kingston to file a Response to the patent owner’s Reply to petitioner’s Opposition to Motion to Amend, based on the Federal Circuit’s en banc holding that the burden to establish unpatentability of proposed substitute claims may not be placed on the patent owner. Aqua Products, Inc. v. Matal, No. 2015-1177, (Fed. Cir. Oct. 4, 2017).

On October 10, 2017, the Federal Circuit issued its decision in Aqua Products holding that the Board improperly placed the burden for motions to amend on patent owners to demonstrate patentability of amended claims.  Instead, it is now petitioners’ burden to demonstrate unpatentability of claims amended in a motion to amend.

The next day, petitioner Kingston Technology Company requested a conference call with the Board to seek the panel’s authorization to file a Motion to Strike, or in the alternative, a Response to the Reply to petitioner’s Opposition to Motion to Amend.

On the call, petitioner explained that since Aqua Products shifted the burden onto the petitioner to establish the unpatentability of the proposed substitute claims, petitioner deserves the last word on the issue of the patentability of the proposed claims. Based on this, petitioner argued it was entitled to file the response, which should be twelve pages, the same length as the patent owner’s reply.

The patent owner disagreed. The patent owner asserted that it was not clear from Aqua Products that patent owner’s burden to establish the patentability of the proposed claims had been eliminated, and patent owners are typically allowed the last word on motions to amend. The patent owner further argued that, even if the petitioner were to be granted additional briefing, the petitioner should not be permitted to introduce new prior art.

The Board agreed with petitioner. Specifically, the Board noted that the Federal Circuit shifted the burden from the patent owner to the petitioner to prove all propositions of unpatentability, including amended claims. Moreover, the Board interpreted Aqua Products as authorizing the Board to allow the admission of additional prior art, or to order additional briefing, to aid in rendering its decisions on patentability. Accordingly, the Board authorized petitioner to file a response, but noted that the response must relate solely to the patentability of the proposed substitute claims. The Board further determined that the petitioner’s reply should be limited to eight pages, since the patent owner did not use all twelve pages of the reply to address patentability.

This order represents one of the first instances in which the Board has addressed procedures for handling briefing related to motions to amend based on the Federal Circuit’s Aqua Products decision.  As the Board issues additional orders, it will be worthwhile to monitor the trends that develop.