On August 12, 2016, the Federal Circuit agreed to rehear en banc In re Aqua Products, Inc., No. 2015-1177 (Fed. Cir. May 25, 2016) and to stay a petition for rehearing en banc in Prolitec, Inc., v. Scentair Techs, Inc., 807 F.3d 1353 (Fed. Cir. 2015).  In both these cases, the Board denied the patent owner’s request to file a motion to amend having concluded the patent owner had not met its burden to establish patentability.

The issues the Federal Circuit will address are:

(1) “When a patent owner moves to amend claims under 35 U.S.C. § 316(d), may the PTO require [it] to bear the burden of persuasion, or … production, regarding patentability … as a condition to allowing them” under 35 U.S.C. § 316(d)?; and

(2) “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 outcome of this rehearing could provide patent owners with a meaningful opportunity to obtain amended claims and thus have a significant impact on AIA proceedings.