PTO’s Rehearing Petition in Bosch: Signaling Future Rulemaking After Aqua Products?, PTAB Litigation Blog

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On February 5, 2018, the PTO filed a petition for rehearing of Bosch Auto. Serv. Sol’ns, LLC v. Matal, 878 F.3d 1027 (Fed. Cir., Dec. 22, 2017). The petition asks the panel "not . . . to alter its judgment, but only to clarify a sentence in its precedential opinion that could give rise to needless misunderstandings in the future." The sentence at issue relates to the panel’s characterization of the Court’s en banc holding in Aqua Products, Inc. v. Matal, 872 F.3d 1290 (Fed. Cir., Oct. 4, 2017). Specifically, the panel stated that, "this Court [in Aqua Products] recently ruled that the patent owner does not bear the burden of proof on the patentability of its proposed amended claims. Rather, the petitioner bears the burden of proving that the proposed amended claims are unpatentable ‘by a preponderance of the evidence.’ 35 U.S.C. § 316(e)." In its rehearing petition, the PTO argues that a majority of judges in Aqua Products (Prost, Dyk, Reyna, Taranto, Chen, and Hughes) found that § 316(e) is ambiguous as to the burden of persuasion for amended claims, and thus the second, italicized, sentence in the quoted language incorrectly suggests that § 316(e) unambiguously places the burden on the petitioner. On February 12, 2018, the Federal Circuit invited a response from patent owner to the PTO’s request. The patent owner’s response is requested by February 26, 2018.

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