On November 21st, the PTAB issued guidance on motions to amend based on the Federal Circuit’s en banc decision in Aqua Products, Inc. v. Matal, 872 F.3d 1290 (Fed. Cir. 2017). In view of the Aqua Products decision, the PTAB will not place the burden of persuasion on the patent owner with respect to the patentability of substitute claims presented in a motion to amend. Instead, after the patent owner files a motion to amend, the Board will determine whether the substitute claims are unpatentable by a preponderance of the evidence based on the entirety of the record, including the opposition by the petitioner.
Jinnie Reed is an Associate in Mintz Levin's Boston office. She focuses her practice on intellectual property litigation. She has represented technology, pharmaceutical, and finance companies in matters before state courts, federal district courts, the International Trade Court, US courts of appeals, and the US Supreme Court, and has participated in several mediations.