A Factionated Federal Circuit Holds that Petitioner has the Burden to Show Unpatenability

In Aqua Products, Inc., v. Matal, [2015-1177] (October 4, 2017), a plurality of the Federal Circuit en banc held that §316(e) requires the petitioner to prove all propositions of unpatentability, including for amended claims.

The “decision” consists of five opinions spanning 148 pages: (1) the opinion of the plurality of five judges, joined by two who concur in the result; (2) a separate opinion by three of the five members of the plurality;  (3) a separate opinion by the two judges who concurred in the result, joined in part by four judges; (4) a dissent by four of the judges, in which the two concurring judges join in part; and (5) a separate dissent by two of the four dissenters.

The 66 page plurality opinion of five judges (joined by an additional two who concurred in the result), vacated the rejection of Aqua’s motion to amend its claims, and remanded the Final Written Decision to the Board for reconsideration with the burden of persuasion with respect to the patentability of Aqua’s amended claims on the petitioner, and to consider the motion on the entire record.

The plurality opinion finds the statute unambiguously places the burden on the petitioner, but because six of the eleven judges found the statute ambiguous, the plurality opinion dove into a detailed analysis of whether the USPTO’s actions were entitled to Chevron or Auer deference.

While a delight for Administrative Law aficionados, the bottom line is that 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, and the Board must consider the entirety of the record before it when assessing the patentability of amended claims, and must justify any conclusions of unpatentability with respect to amended claims based on that record.