The Federal Circuit will rehear en banc the appeal In re: Aqua Products, Inc., No. 2015-1177 to address whether the PTAB’s rules requiring the Patent Owner to demonstrate the patentability of proposed amended claims are consistent with the statute permitting claim amendment during an IPR challenge, 35 U.S.C. 316(d) and (e).  A panel of the Federal Circuit had previously upheld the PTAB’s decision not to allow the Patent Owner to amend the claims during the IPR proceeding because the PTAB concluded the Patent Owner failed to demonstrate the amended claims were patentable.

The specific questions that will be heard by the en banc Federal Circuit are:

(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 challenges to such a claim? If so, where would the burden of persuasion, or a burden of production, lie?

The first round of supplemental briefing on these questions is due by noon on September 26, 2016, and the oral argument has been scheduled for December 9, 2016 at 10:00 a.m.