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Client Alert: Amending Claims in IPRs

October 11, 2017

In a recent decision, the U.S. Court of Appeals for the Federal Circuit made it easier for patent owners to amend claims in inter partes review proceedings (IPR). (Aqua Products Inc. v. Matal, 15-1177 (Fed. Cir. Oct. 4, 2017)).  The court changed the burden of proof associated with the patentability of amended claims in an IPR, shifting the burden from the patent owner seeking the amendment to the petitioner opposing it.  Prior to the Aqua decision, the Patent Trial and Appeals Board placed the burden on the patent owner to prove that any proposed amended claims were patentable.  The Aqua decision is likely to result in an increase in motions to amend claims by patent owners, but its long-term, substantive impact remains to be seen. 

Partner Andrew Ryan, chair of the Post-Grant Practice Group at Cantor Colburn, is author of this Client Alert on the Aqua decision.  He is a trial lawyer with over a decade of experience representing plaintiffs and defendants in patent cases and other complex litigation matters. Cantor Colburn has extensive experience in handling IPRs and other post grant proceedings for its clients.

Please note that each situation has its own unique circumstances and ramifications. This Client Alert is for informational purposes only and is not legal advice.

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