On October 4, 2017, the Federal Circuit issued its decision in In re Aqua Products, which decided whether the patent owners should bear the burden of proof to show that their proposed claims are patentable. The court concluded that the petitioner challenging the validity of a patent in proceedings like inter partes reviews has the burden of showing that proposed amendments are unpatentable, resulting in a win for Aqua Products. Finnegan attorneys James Barney, David Mroz, and Timothy McAnulty represented Aqua Products.
Aqua Products had challenged the USPTO's rule that patent owners have the burden of showing their proposed new claims are valid after the PTAB denied the company's motion to amend its swimming pool cleaner patent in an inter partes review. Many patent owners agreed that the USPTO's rule made it very difficult to amend claims, with statistics showing that the PTAB denied 112 out of 118 motions to amend in AIA reviews. The Federal Circuit agreed to hear the case en banc to review the amendment rule and decided that the burden of persuasion does not fall on the patent owner.
James Barney said [Aqua Products] "is pleased with the Federal Circuit’s decision, which is based on a sound interpretation of the IPR statute, and it is looking forward to continuing to defend its intellectual property rights before the Patent Trial and Appeal Board."
