On November 21st, the PTAB issued guidance for motions to amend in post-grant trials based on the Federal Circuit’s en banc decision in Aqua Products, Inc. v. Matal, 872 F.3d 1290 (Fed. Cir. 2017).  In line with that decision, the PTAB 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.

For future cases, the process for making and briefing motions to amend will remain unchanged.  For pending PTAB trials where a motion to amend is at play, the guidance outlines accommodations that will or can be made so that the ramifications of Aqua Products are properly considered in the Final Written Decision.  In many of those cases, the PTAB has already sua sponte extended deadlines and invited further briefing.  But if parties are concerned that they have not have had an opportunity to properly account for Aqua Products in their matter, those parties are encouraged to contact the PTAB to arrange a conference call as soon as reasonably possible.

The full text of the guidance can be found here.