Industry Reaction to the Federal Circuit’s Decision in Aqua Products v. Matal

October 5, 2017Quotes & Mentions
IP Watchdog

Dinsmore partner Brian O'Shaughnessy spoke to IP Watchdog about the impact of Federal Circuit’s Decision in Aqua Products v. Matal.

 "In Aqua Products Inc. v. Matal, the Federal Circuit, through the eloquence of Judge O’Malley, has finally affirmed the widely held notion that fundamental principles of equity and fairness, and adherence to the overall statutory structure of Title 35 USC, demands that patentees be allowed to amend claims in an Inter Partes Review proceeding; and that the burden must be on the petitioner to show, not only that one or more of the originally issued claims is likely invalid, but that alternative claims presented by the patentee in that proceeding are likewise unpatentable. In addition to the detailed statutory construction set out by the court, this result aligns with the statute as a whole. Generally, the statute subscribes to the proposition that an inventor is entitled to patent unless it can be shown that the claimed subject matter is not novel, or would have been obvious (among other grounds). The burden of proof for depriving an inventor of the patent right for an invention is upon the government. And now, the burden is likewise on one who would refute the grant by challenging the earlier determination of the U.S. Patent and Trademark Office."