Earlier this month the Federal Circuit granted en banc review of
the PTAB's process for reviewing Motions to Amend Claims in AIA
proceedings. In the case In re Aqua Products, the patent
owner argues that it met the statutory requirements for making a
claim amendment but the PTAB failed to enter the amendment based on
a erroneous interpretation of the statute which results in
additional, onerous requirements being levied on a patent
owner.
The statute in question is 35 U.S.C. § 316(d)(3), which
requires that a claim amendment (1) not enlarge the scope of the
claims and (2) not introduce new matter. In implementing this
portion of the statute, the PTAB has held that a patent owner, as
movant, must demonstrate that the amended claims are not invalid.
See, e.g., Idle Free Sys., Inc. v. Bergstrom, Inc.,
IPR2012-00027, Paper 26 (PTAB June 11, 2013). In other words, the
patent owner must prove that the amended claims are patentable over
all prior art known to the patent
