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In an order granting the petition for rehearing en banc, the Federal Circuit vacated its previous panel decision in In re: Aqua Products, Inc., 823 F.3d 1369 (Fed. Cir. 2016), and asked the parties—Appellant Aqua Products and the Intervenor, the Director of the USPTO—to brief the following issues:

“(a) When the patent owner moves to amend its claims under 35 U.S.C. § 316(d), may the PTO require the patent owner to bear the burden of persuasion, or a burden of production, regarding patentability of the amended claims as a condition of allowing them?  Which burdens are permitted under 35 U.S.C. § 316(e)?

(b) When the petitioner does not challenge the patentability of a proposed amended claim, or the Board thinks the challenge is inadequate, may the Board sua sponte raise patentability challenges to such a claim?  If so, where would the burden of persuasion, or a burden of production, lie?”

The Federal Circuit also invited the views of amici curiae.

In re: Aqua Products, Inc., Case No. 2015-1177 (August 12, 2016); Opinion by: Per Curiam (Prost, Newman, Lourie, Dyk, Moore, O’Malley, Reyna, Wallach, Taranto, Chen, Hughes); Appealed From: United States Patent and Trademark Office, Patent Trial and Appeal Board.  Read the full opinion here.

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