Fed. Cir. Agrees With PTO on Tough AIA Amendment Rule

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By Tony Dutra

May 25 — The Federal Circuit, backing up the Patent Trial and Appeal Board, said May 25 that a manufacturer of robotic swimming pool cleaners had failed to show that three substitute patent claims were not obvious ( In re Aqua Prods., Inc. , 2016 BL 165962, Fed. Cir., No. 2015-1177, 5/25/16 ).

The decision against Aqua Products Inc. is notable because it continues the appeals court's record of approving how the Patent Trial and Appeal Board is implementing proceedings under the 2011 America Invents Act.

Previously, the U.S. Court of Appeals for the Federal Circuit agreed that the PTAB can require that amended claims be not obvious when considered against all the prior art on record (116 PTD, 6/17/15). It also agreed that the burden of proof is on the patent owner to show non-obviousness (29 PTD, 2/12/16). An invention that is obvious in light of the prior art, or that has been described in the prior art, can't be patented.

In this case, Aqua's amended claims for the robotic cleaner included three narrowing limitations but its arguments focused only on one. The court's additional holding was that the PTAB could reject the claims if arguments on the one limitation failed, and it was not required to look at the other two.

Source Material:

Cases below: Litigation docket (S.D.N.Y.)PTAB decision (IPR2013-00159)

U.S. Patent:No. 8,273,183

Undue Focus on One Limitation

Aquasued competitor Zodiac Pool Systems Inc., alleging infringement of U.S. Patent No. 8,273,183. Zodiac filed the inter partes review petition at issue in this case, challenging the patent as obvious in light of two patents issued in 1967 and 1976.

The PTAB instituted trial on 15 of the 18 claims Zodiac challenged. Aqua essentially gave up on three others, which the proposed amendments were intended to replace. The board ruled that the 12 remaining claims were invalid and rejected the amendment request as well.

The amendments added “vector,” “directional movement” and “filtered water” limitations. It was a close call whether Zodiac's prior art disclosed the vector limitation, so Aqua focused on that point. The Federal Circuit's opinion indicated that the 40-plus-year-old patents didn't disclose the other two limitations.

But, the court said, if the PTAB had to show that those two limitations were disclosed in other prior art in the record, that would have shifted the burden to the board to show obviousness. The board only has to show that it “fully considered the particular arguments raised by the patentee,” the court said.

Since the court agreed with the PTAB that the prior art in fact did disclose the vector limitation, Aqua had nothing left to distinguish its new claims.

PTAB Page Limit: Asking for Extension Might Help

Aqua also argued in court that the PTAB's 15-page limit on a motion to amend didn't allow it to adequately support its non-obviousness arguments.

“The problem here is that Aqua did not ask the Board for additional pages, or any similar relief,” the court said in a footnote.

In any event, the rule changed since Aqua had to file (63 PTD, 4/1/16). Motions to amend can now be 25 pages and can include a claims appendix.

The case presumably returns to the U.S. District Court for the Southern District of New York with the three '183 patent claims upheld by the PTAB at the trial institution stage.

Judge Jimmie V. Reyna wrote the court's opinion, which was joined by Chief Judge Sharon Prost and, sitting by designation, Chief Judge Leonard P. Stark of the U.S. District Court for the District of Delaware.

Finnegan, Henderson, Farabow, Garrett & Dunner LLP represented Aqua. The PTO's Office of the Solicitor represented the agency.

To contact the reporter on this story: Tony Dutra in Washington at adutra@bna.com

To contact the editor responsible for this story: Mike Wilczek in Washington at mwilczek@bna.com

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