In re Aqua Prods., Inc.

• Citation: 833 F.3d 1335 (Mem),119 U.S.P.Q.2d 1882
• Decision Date: 12 August 2016
• Docket Number: 2015–1177
• Parties: In re: Aqua Products, Inc., Appellant.
• Court: United States Courts of Appeals. United States Court of Appeals for the Federal Circuit

833 F.3d 1335 (Mem)

119 U.S.P.Q.2d 1882

In re: Aqua Products, Inc., Appellant.

2015–1177

United States Court of Appeals, Federal Circuit.

August 12, 2016

James R. Barney, Timothy P. McAnulty, David Mroz, Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, Washington, DC, Anthony A. Coppola, Anthony J. DiFilippi, Jeffrey A. Schwab, Abelman Frayne & Schwab, New York, NY, for Appellant.

Before Prost, Chief Judge, Newman, Lourie, Dyk, Moore, O'Malley, Reyna, Wallach, Taranto, Chen, and Hughes, Circuit Judges.^*

ON PETITION FOR REHEARING

Per Curiam.

ORDER

Appellant Aqua Products, Inc. filed a petition for rehearing and rehearing en banc . A response was invited of the Intervenor, the Director of the United States Patent and Trademark Office.¹ The petition and response were considered by the panel that heard the appeal, see Fed. Cir. R. 35

Practice Notes, and thereafter referred to the circuit judges in regular active service. A poll was requested and taken, and the court decided that the appeal warrants en banc consideration.

On consideration thereof,

IT IS ORDERED THAT :

(1) The petition for rehearing en banc filed by Appellant Aqua Products, Inc. is granted.

(2) The court's opinion in In re Aqua Products, Inc., 823 F.3d 1369 (Fed. Cir. 2016)

is vacated, and the appeal is reinstated.

(3) The pending petition for rehearing en banc in Prolitec, Inc., v. ScentAir Technologies, Inc. , 807 F.3d 1353 (Fed. Cir. 2015), has been stayed by the court

pending resolution of the issues of this rehearing en banc .

(4) The Appellant and Intervenor are requested to file supplemental briefs. The briefs should address the following questions:

(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?

Briefing should be limited to these questions.

(5) The supplemental en banc briefs and briefs of any amici curiae shall be electronically filed in the ECF system, and thirty paper copies of each brief shall be filed with the court. Two paper copies of all filings shall be served on opposing counsel. Briefs shall adhere to the type-volume limitations set forth in Federal Rule of Appellate Procedure 32 and Federal Circuit Rule 32.

(6) The supplemental brief of Appellant must be filed by noon on Monday, September 26, 2016. Any amicus brief supporting Appellant's position or supporting neither position must be filed by noon on Wednesday, October 5, 2016. Intervenor's supplemental brief must be filed by noon on Wednesday, October 26, 2016. Any amicus brief supporting Intervenor's position must be filed by noon on Wednesday, November 2, 2016. Appellant's reply brief must be filed by noon on Thursday, November 10, 2016. No extensions will be allowed.

(7) In addition, the Appellant and Intervenor are directed to file with the court thirty paper copies of their original briefs and any Appendix within 17 days from the date...