En banc CAFC in Aqua: very little but cogitations and academic exercises?

The en banc CAFC in Aqua v. Matal noted:


Upon review of the statutory scheme, we believe that
§ 316(e) unambiguously requires the petitioner to prove
all propositions of unpatentability, including for amended
claims. This conclusion is dictated by the plain language
of § 316(e), is supported by the entirety of the statutory
scheme of which it is a part, and is reaffirmed by reference
to relevant legislative history. Because a majority of
the judges participating in this en banc proceeding believe
the statute is ambiguous on this point, we conclude in the
alternative that there is no interpretation of the statute
by the Director of the Patent and Trademark Office
(“PTO”) to which this court must defer under Chevron,
U.S.A. Inc. v. Natural Resources Defense Council, Inc.,
467 U.S. 837 (1984). And we believe that, in the absence
of any required deference, the most reasonable reading of
the AIA is one that places the burden of persuasion with
respect to the patentability of amended claims on the
petitioner.1 Finally, we believe that the Board must
consider the entirety of the record before it when assessing
the patentability of amended claims under
§ 318(a) and must justify any conclusions of unpatentability
with respect to amended claims based on that record.


Because the participating judges have different
views—both as to the judgment we should reach and as to
the rationale we should employ in support of that judgment,
as explained below, today’s judgment is narrow.
The final written decision of the Board in this case is
vacated insofar as it denied the patent owner’s motion to
amend the patent. The matter is remanded for the Board
to issue a final decision under § 318(a) assessing the
patentability of the proposed substitute claims without
placing the burden of persuasion on the patent owner.


Footnote 1 notes:


To the extent our prior decisions in Microsoft
Corp. v. Proxyconn, Inc., 789 F.3d 1292 (Fed. Cir. 2015);
Prolitec, Inc. v. ScentAir Techs., Inc., 807 F.3d 1353 (Fed.
Cir. 2015), petition for reh’g pending; Synopsys, Inc. v.
Mentor Graphics Corp., 814 F.3d 1309 (Fed. Cir. 2016);
and Nike, Inc. v. Adidas AG, 812 F.3d 1326 (Fed. Cir.
2016), are inconsistent with this conclusion, we overrule
those decisions.



Within the conclusion


This process has not been easy. We are proceeding
without a full court, and those judges who are participating
disagree over a host of issues. As frustrating as it is
for all who put so much thought and effort into this matter,
very little said over the course of the many pages that
form the five opinions in this case has precedential
weight. The only legal conclusions that support and
define the judgment of the court are: (1) the 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 (2) in the
absence of anything that might be entitled deference, the
PTO may not place that burden on the patentee. All the
rest of our cogitations, whatever label we have placed on
them, are just that—cogitations. Even our discussions on
whether the statute is ambiguous are mere academic
exercises.