Bosch Automotive Service Solutions, LLC v. USPTO


Docket Nos. 2015-1928 (IPR2014-00183)

NEWMAN, CHEN, HUGHES
December 22, 2017

Brief summary: PTAB IPR FWD affirmed as to finding of obviousness and anticipation but vacated as to dismissal of contingent motion to amend claims since the that the PTAB “impermissibly assigned the burden of proof…to Bosch” (Aqua Prods., FC 2017).

Summary: Bosch appealed PTAB IPR FWD finding all of the challenged claims of Bosch’s US 6,904,796 relating to a handheld tire monitoring tool (Remote Tire Pressue Monitoring System (“RTMS”)) and methods relating to the same unpatentable and denying Bosch’s contingent motion to amend the claims. IPR was instituted at Autel U.S. Inc.’s request on obviousness (pre-AIA § 103) and anticipation grounds in view of the McClelland, Kranz, Dixit, and Howell references. Autel chose not to participate in this appeal, and the USPTO intervened. The PTAB construed the “means-plus-function” limitation “means for activating” RTMS tire sensors as “a magnet, a valve core depressor, and a frequency generating circuitry and microprocessor for generating and transmitting continuous wave signals and modulated signals” and a “plurality of means” as one or more means. In its FWD, the PTAB decided that the claims were invalid for obviousness, “Bosch’s asserted objective indicia to be both lacking a sound evidentiary foundation and untethered from the claims”, that the claims of its contingent motion to amend to be indefinite and that “Bosch failed to carry its burden of proof that the claims would have been patentable over the prior art.” The FC panel explained that it reviews PTAB’s legal conclusions de novo and its factual findings for substantial evidence that “a reasonable mind might accept” (In re Gartside, FC 2000; Consol. Edison, US 1938). Regarding the tool claims, Bosch argued there was no motivation to combine the references because “Dixit was so objectively very different from the tool of the ‘796 patent, that there would be no motivation nor design need to combine Dixit” and the other references, but the FC panel disagreed since Dixit “is from the same field of endeavor” and “reasonably pertinent to the particular problem with which the inventor is involved” (In re Bigio, FC 2004; EWP, FC 1985 (reference “considered for everything it teaches”)). The FC agreed with the PTAB’s finding that Bosch’s proferred evidence of commercial success was not properly supported, its evidence of licensing (Iron Grip, FC 2004; In re GPAC, FC 1995) and industry praised lacked a nexus to the claims. Regarding the method claims found unpatentable for anticipation, the FC panel concluded that substantial evidence supported the PTAB’s conclusion that “McClellan discloses the requisite plurality of activation means”. With respect to the PTAB’s denial of Bosch’s motion to amend for indefiniteness and failing to show the patenability of the same, the FC panel found that the PTAB “impermissibly assigned the burden of proof…to Bosch” (Chicago Bd. Options Exch., FC 2014; Aqua Prods., FC 2017 (“Where the challenger ceases to participate in the IPR and the Board proceeds to final judgment, it is the Board that must justify any finding of unpatentability…”); § 316(e)) and therefore vacated this part of the decision.

This entry was posted in Analgous Art, Anticipation (35 USC 102), Inter Parties Review (IPR), IPR, Means-plus-function, Obviousness. Bookmark the permalink.

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