CAFC to tackle some issues in amending claims in IPR
The CAFC will address issues of amending claims during IPR in the
case In re Aqua Products, 2015-1177.
The issues in Aqua:
(1) The petition for rehearing en banc filed by Appellant
Aqua Products, Inc. is granted.
(2) The court’s opinion in In re Aqua Products, Inc., 823
F.3d 1369 (Fed. Cir. 2016) is vacated, and the appeal is
(3) The pending petition for rehearing en banc in Prolitec,
Inc., v. ScentAir Technologies, Inc., 807 F.3d 1353 (Fed.
Cir. 2016), has been stayed by the court pending resolution
of the issues of this rehearing en banc.
(4) The Appellant and Intervenor are requested to file
supplemental briefs. The briefs should address the following
(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 challeng-
es to such a claim? If so, where would the burden
of persuasion, or a burden of production, lie?
Briefing should be limited to these questions.
(5) The supplemental en banc briefs and briefs of any
amici curiae shall be electronically filed in the ECF system,
and thirty paper copies of each brief shall be filed
with the court. Two paper copies of all filings shall be
served on opposing counsel. Briefs shall adhere to the
type-volume limitations set forth in Federal Rule of
Appellate Procedure 32 and Federal Circuit Rule 32.
(6) The supplemental brief of Appellant must be filed by
noon on Monday, September 26, 2016. Any amicus brief
supporting Appellant’s position or supporting neither
position must be filed by noon on Wednesday, October 5,
2016. Intervenor’s supplemental brief must be filed by
noon on Wednesday, October 26, 2016. Any amicus brief
supporting Intervenor’s position must be filed by noon on
Wednesday, November 2, 2016. Appellant’s reply brief
must be filed by noon on Thursday, November 10, 2016.
No extensions will be allowed.
(7) In addition, the Appellant and Intervenor are directed
to file with the court thirty paper copies of their original
briefs and any Appendix within 17 days from the date of
(8) The court invites the views of amici curiae.