In a fractured en banc decision, the Federal Circuit ruled that the petitioner in an inter partes review, not the patent owner, has the burden of showing that amended claims are unpatentable. Aqua Products, Inc. v. Matal, No. 2015-1177 (Fed. Cir. Oct. 4, 2017). Furthermore, the PTAB must base its patentability determinations regarding such amended claims on the entirety of the IPR record, not just the "face of the motion to amend." This ruling overturns the court's previous decisions in Synopsys, Inc. v. Mentor Graphics Corp., 814 F.3d 1309 (Fed. Cir. 2016) and Nike, Inc. v. Adidas AG, 812 F.3d 1326 (Fed. Cir. 2016), which upheld the PTAB's long-held rule that the patent owner has the burden of proving its proposed amended claims are patentable over the prior art of record and additional prior art known to the patent owner.
The Federal Circuit's ruling leaves in place the patent owner's obligation to show that amended claims: (1) do not impermissibly enlarge the scope of the claims; (2) do not introduce new subject matter; and (3) respond to instituted invalidity arguments at issue in the IPR. Thus, a patent owner's amendment cannot "inject a wholly new proposition" regarding patentability into the IPR. Nonetheless, because IPRs do not permit further examination after amendment, questions concerning "untested" amended claims remain. The Federal Circuit addressed this issue by noting that the Board may reopen the record after a motion to amend to allow admission of additional relevant prior art or to order additional briefing.
While this new decision eases burdens on patent owners seeking amendment in IPR, it remains to be seen whether it will result in a significant increase in the grant of motions to amend, given that amended claims are subject to an accused infringer's intervening rights, and in view of the fact that narrower amended claims may not be infringed at all.