In In re Aqua Products, Inc., [2015-1177] (May 25, 2016), the Federal Circuit affirmed the\u00a0PTAB’s denial of the patent owner’s motion to amend in\u00a0IPR2013-00159.<\/p>\n
The Federal Circuit made quick work of the PTAB’s placing the burden on the patent owner to show patentability over all of the prior art of record, holding it was bound by precedent.<\/p>\n
The Federal Circuit also found no abuse of\u00a0discretion in the Board’s failure to to\u00a0evaluate objective indicia of non-obviousness and various\u00a0new limitations in the proposed claims, because Aqua\u00a0did not argue that those indicia and limitations distinguish\u00a0the proposed claims over the prior art. \u00a0The PTAB’s obligation with respect to motions to amend is\u00a0limited to considering
\nonly those arguments that the patent owner actually raises, \u00a0 The Federal Circuit said that to hold\u00a0otherwise would require the Board to fully reexamine the\u00a0proposed claims in the first instance, effectively shifting
\nthe burden from the patentee to the Board. \u00a0The Federal Circuuit said that consideration of a\u00a0motion to amend in compliance with the APA only requires
\nthat the Board show that it fully considered the\u00a0particular arguments raised by the patentee and that it\u00a0provided a reasoned explanation for why those arguments\u00a0were unpersuasive.<\/p>\n","protected":false},"excerpt":{"rendered":"
In In re Aqua Products, Inc., [2015-1177] (May 25, 2016), the Federal Circuit affirmed the\u00a0PTAB’s denial of the patent owner’s motion to amend in\u00a0IPR2013-00159. The Federal Circuit made quick work of the PTAB’s placing the burden on the patent owner … Continue reading