IP Law Daily PTAB’s refusal to substitute new claims in IPR was not erroneous
Wednesday, May 25, 2016

PTAB’s refusal to substitute new claims in IPR was not erroneous

By Mark Engstrom, J.D.

The Patent Trial and Appeal Board did not abuse its discretion by denying a motion by Aqua Products to substitute three new patent claims during an inter partes review (IPR) of the company’s patent on an automated swimming pool cleaner, the U.S. Court of Appeals for the Federal Circuit has ruled (In re Aqua Products, Inc., May 25, 2016, Reyna, J.). The ruling of the Board was therefore affirmed.

Zodiac Pool Systems petitioned the Board for a review of 18 claims of U.S Patent No. 8,273,183, titled “Automated swimming pool cleaner having an angled jet drive propulsion system.” The patent disclosed an automated pool cleaner that used an “angled jet drive propulsion system” to move in a controlled pattern. Rather than using a motor to drive its wheels, the cleaner shot filtered water backwards, at an angle, to create a forward force that propelled the cleaner, and a normal force that kept the cleaner’s wheels in contact with the floor of a pool.

The Board instituted trial on all but three of the challenged claims. Thereafter, Aqua moved to substitute three new claims (claims 22, 23, and 24, which amended claims 1, 8, and 20) to add a requirement that: (1) the angled jet would create a downward vector force behind the front wheels (the “vector” limitation) and (2) the wheels would control the directional movement of the cleaner (the “directional movement” limitation). In addition, substitute claim 23 added a requirement that the cleaner would have four wheels (the “four wheel” limitation) and substitute claim 24 added a requirement that the jet would shoot filtered water (the “filtered water limitation”).

The Board denied Aqua’s motion to amend. According to the Board, the vector limitation would have been obvious because U.S. Patent No. 3,936,899 (“Henkin”) taught the positioning of the jet at an angle that satisfied the vector limitation. Regarding the other new limitations, the Board concluded, without analysis or evidence, that they were within the ordinary skill of a person in the art. The court also found, without analysis or evidence, that Aqua’s arguments regarding objective indicia of non-obviousness were unpersuasive.

On appeal, Aqua argued that: (1) the Board’s regulations requiring a patentee to show that an amended claim was patentable over the art of record were unsupported by statute; (2) the Board’s interpretation of those regulations impermissibly placed on the patentee a burden to show non-obviousness; and (3) the Board had abused its discretion by denying Aqua’s motion to amend, without considering all of the new limitations and the objective indicia of non-obviousness, as required for the invalidation of an original claim.

The court noted that its precedents—Microsoft Corp. v. Proxyconn, Inc., for example, and Prolitec, Inc. v. ScentAir Techs., Inc.—have upheld the Board’s approach of allocating to the patentee the burden of showing that its proposed amendments would overcome the art of record. Given those precedents, the panel could not revisit the question of whether the Board could require a patentee to demonstrate the patentability of substitute claims over the art of record.

With respect to the issue of whether the Board had abused its discretion by failing to evaluate objective indicia of non-obviousness and various new limitations in the proposed claims—even though Aqua did not argue that those indicia and limitations distinguished the proposed claims over the combination of Henkin and U.S. Patent No. 3,321,787 (“Myers”)—the court found no abuse of discretion.

Because Aqua had the burden of showing that the substitute claims were patentable, the Board’s evaluation of Aqua’s motion to amend was limited to the consideration of the arguments that Aqua had actually raised. To hold otherwise would require the Board to fully reexamine the proposed claims in the first instance, effectively shifting the burden from the patentee to the Board.

According to the court, denying a motion to amend in compliance with the Administrative Procedure Act only required that the Board show that: (1) it fully considered the particular arguments that were raised by the patentee and (2) it provided a reasoned explanation for why those arguments were unpersuasive. In this case, both of those requirements were satisfied.

Aqua proffered just one argument that explained why the substitute claims might overcome the combination of Henkin and Myers: the combination failed to teach the newly added vector limitation. To deny Aqua’s motion, all the Board had to do was rebut that argument. According to the court, it did.

The Board explained that Henkin disclosed the vector limitation by teaching a jet whose angle was “selected to yield both a downward thrust component (i.e., normal to the vessel surface) for providing traction and a forward component which aids in propelling the car.” The Board thus found that Henkin taught the vector limitation explicitly.

Aqua argued that the Board’s analysis was unsupported because the purpose of the angled jet in the prior art was to promote random movement, rather than stability (as in Aqua’s patent). That argument was unpersuasive, the court reasoned, because the vector limitation did not preclude random movement. Indeed, the specification in Aqua’s patent taught that the invention encompassed both controlled and random movement.

Ultimately, the court concluded that Board did not abuse its discretion by denying Aqua’s proposed amendment because the company’s sole argument—that the vector limitation made the substitute claims patentable over the combination of Henkin and Myers—was rebutted by the Board. Because Aqua’s arguments regarding that combination rested exclusively on the vector limitation, the Board had no obligation to address the other amendments or to consider the issue of objective indicia of non-obviousness, which Aqua had not raised in connection with the combination of Henkin and Myers.

The case is No. 2015-1177.

Attorneys: James R. Barney, Timothy P. McAnulty, and David Mroz, (Finnegan, Henderson, Farabow, Garrett & Dunner, LLP) and Anthony A. Coppola, Anthony J. DiFilippi, and Jeffrey A. Schwab (Abelman Frayne & Schwab) for Aqua Products, Inc. Meredith Hope Schoenfeld, Nathan K. Kelley, Farheena Yasmeen Rasheed, and Scott Weidenfeller, United States Patent and Trademark Office, for intervenor Michelle K. Lee.

Companies: Aqua Products, Inc.

MainStory: TopStory Patent FedCirNews

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