Docket No. 2015-1177 (appeal from IPR2013-00159)
PROST, REYNA, STARK (DJ)
May 25, 2016
Update: Petition for rehearing en banc granted Aug. 12, 2016 regarding amendment process during IPR.
Update 2: USPTO issued guidance on Nov. 21, 2017, explaining that “the Board will not place the burden of persuasion on a patent owner with respect to the patentability of substitute claims presented in a motion to amend.” Provided the “motion to amend…meets the requirements of 35 U.S.C. § 316(d)” (as well as § 42.121 and § 42.221), “the Board will proceed to determine whether the substitute claims are unpatentable by a preponderance of the evidence based on the entirety of the record, including any opposition made by the petitioner” (“[I]f the entirety of the evidence of record before the Board is in equipoise as to the unpatentability of one or more substitute claims, the Board will grant the motion to amend.”) “[C]urrent briefing practice” will not change, but “if any party…believes there is need to discuss the impact of Aqua Products with the Board in a particular case”, a conference call may be arranged (before or after Due Date 1, and the Board may contact parties with pending motions to amend “to let them know that a request for a conference call is appropriate in this regard”).
Brief Summary: Board denial of Aqua’s motion to substitute claims affirmed because the patentee is required to establish that proposed amendments would overcome the art of record and “the Board’s evaluation of Aqua’s motion to amend was limited to considering only those arguments that Aqua actually raised”.
Summary: Aqua appealed Board denial of its motion to substitute claims for those of US 8,273,183 relating to automated swimming pool cleaners. The Board instituted IPR and Aqua moved to substitute new claims 22-24 for those challenged, adding a “vector limitation” (“the jet creates a downward vector force rear of the front wheels”) that it argued was not suggested by the prior art. Other limitations were also included in the proposed new claims but were not argued to have been non-obvious. Aqua also did not argue the “vector limitation” was tied to its objective indicia of commercial success. The Board denied Aqua’s request to amend the claims, reasoning “that the vector limitation would have been obvious” from the prior art and that the other limitations “without analysis or evidence that [those] were within the ordinary skill”. It also concluded “without analysis that Aqua’s arguments regarding objective indicia of non-obviousness were unpersuasive.” Aqua argued in this appeal that the Board’s regulations regarding amendments are not supported by the statute and “impermissibly places the burden on the patentee to show non-obviousness”, and that the Board abused its discretion by denying the motion to amend without considering all the new limitations and the objective indicia of non-obviousness, as would be required for invaliding an original claim.” The FC opinion noted that its “precendent has upheld the Board’s approach” (Microsoft v. Proxyconn, FC 2015; Prolitec, FC 2015 (requiring patentee to establish that proposed amendments would overcome the art of record); Nike, FC 2016 (Board’s approach “consistent with AIA’s statutory framework”)). It found “[t]he only issue left open for our consideration” to be “whether the Board abused its discretion by failing to evaluate the objective indicia”, and found it did not because “the Board’s evaluation of Aqua’s motion to amend was limited to considering only those arguments that Aqua actually raised” (e.g., Aqua presented obviousness-related arguments regarding the “vector limitation”, making “only passing references…to the additional limitations”; “[m]ost of the arguments were made in the course of the main IPR proceedings; non of the arguments appeared in the portion of the motion to amend that sought to explain why” the substituted claims were not obvious) and it did so here (e.g., the Board properly rebutted Aqua’s arguments by explaining how the prior art taught the “vector limitation”). FN2 explains that Aqua excused its failure to present additional arguments on the 15-page limit but the FC panel explained that Aqua did not ask for more pages and it therefore cannot determine if the Board abused its discretion on this point. Thus, the Board decision was affirmed.