On August 12, 2016, in In re Aqua Products, Inc., the Federal Circuit granted a petition for rehearing en banc to address the standard for motions to amend claims during America Invents Act trials. Presently, Patent Owners may amend claims by cancelling challenged claims and “propos[ing] a reasonable number of substitute claims,” provided that the substitute claims do “not enlarge the scope of the claims of the patent or introduce new matter.”
Since the moving party bears the burden of proof for any motion in an AIA trial, the Patent Owner must show patentability of the claims, provide written support for the claims, and provide a proposed claim construction. Given this high burden, motions to amend are rarely used, and even more rarely granted. According to USPTO statistics, only 6 out of 112 (5.4%) motions to amend were granted. Several Federal Circuit panel decisions have endorsed these procedures.