Dog, here it is
PTAB Has It Backwards On Amendments, Full Fed. Circ. Told
By Kelly Knaub
Law360, New York (September 28, 2016, 9:57 PM EDT) -- A patent owner has kicked off briefing before the full Federal Circuit on the Patent Trial and Appeal Board's rules for amending patents in America Invents Act reviews, arguing that the PTAB wrongly puts the burden of proof on the patent owner, not the other way around as Congress intended.
The court is rehearing the appeal of Aqua Products en banc after a panel in May affirmed a PTAB decision that denied Aqua's motion to amend its patent. Aqua argued Monday that the AIA is written to clearly put the burden on the petitioner to prove a patent owner’s proposed new claims are invalid, despite PTAB rules to the contrary.
"Because Congress has spoken directly to this issue and there is no ambiguity in the statutory language, the [U.S. Patent and Trademark Office’s] contrary interpretation is entitled to no deference and should be reversed,” Aqua said.
The PTAB has held that when patent owners move to amend patent claims in an AIA review, they have the burden of showing that the proposed new claims are patentable.
But shifting the burden of persuasion to the patent owner not only contravenes the plain language of the AIA, it destroys the PTAB's role as a neutral arbiter and essentially puts it in the shoes of a litigant adverse to the patent owner, Aqua argued.
Aqua urged the Federal Circuit to reverse the USPTO’s interpretation of the statute and regulations to the extent it places a burden of persuasion on patent owners, and asked the court to remand the case to the board with instructions to issue a certificate that includes the proposed substitute claims.
The full Federal Circuit agreed in September to review the rules following the panel's May decision.
In April, the USPTO released statistics showing that the board has granted only six motions to amend and denied 112. Aqua Products cited those numbers in its en banc petition in June and again in its opening brief, bemoaning the "95 percent failure rate" for amendments and saying that was clearly not the intent of Congress.
Amicus briefs in support of Aqua are due Oct. 5, and the PTO’s brief is due by Oct. 26, according to James Barney, an attorney for Aqua. Oral argument is set for Dec. 9, he said.
Aqua Products sued Zodiac Pool Systems Inc. in 2012 over a patent on an automated swimming pool cleaner. Zodiac responded by challenging the patent in an inter partes review, and the PTAB found many claims to be invalid and denied Aqua Products' motion to amend. Zodiac had been dismissed from the case by the time the Federal Circuit panel affirmed in May.
A USPTO spokesman said the agency declined to comment.
The patent-in-suit is U.S. Patent Number 8,273,183.
Aqua Products is represented by James Barney, David Mroz and Timothy McAnulty of Finnegan Henderson Farabow Garrett & Dunner LLP.
The USPTO is represented by in-house counsel Meredith Hope Schoenfeld, Nathan Kelley, Farheena Yasmeen Rasheed and Scott Weidenfeller.
The case is In re: Aqua Products Inc., case number 15-1177, in the U.S. Court of Appeals for the Federal Circuit.
--Additional reporting by Ryan Davis. Editing by Mark Lebetkin.
