Bloomberg BNA’s Patent Trademark & Copyright Law Daily™is the IP industry’s premier news service, offering objective, timely,and reliable daily news coverage and commentary from leading IP law...
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:
U.S. Patent:No. 8,273,183
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.
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 email@example.com
To contact the editor responsible for this story: Mike Wilczek in Washington at firstname.lastname@example.org
Text at http://src.bna.com/flr .
All Bloomberg BNA treatises are available on standing order, which ensures you will always receive the most current edition of the book or supplement of the title you have ordered from Bloomberg BNA’s book division. As soon as a new supplement or edition is published (usually annually) for a title you’ve previously purchased and requested to be placed on standing order, we’ll ship it to you to review for 30 days without any obligation. During this period, you can either (a) honor the invoice and receive a 5% discount (in addition to any other discounts you may qualify for) off the then-current price of the update, plus shipping and handling or (b) return the book(s), in which case, your invoice will be cancelled upon receipt of the book(s). Call us for a prepaid UPS label for your return. It’s as simple and easy as that. Most importantly, standing orders mean you will never have to worry about the timeliness of the information you’re relying on. And, you may discontinue standing orders at any time by contacting us at 1.800.960.1220 or by sending an email to email@example.com.
Put me on standing order at a 5% discount off list price of all future updates, in addition to any other discounts I may quality for. (Returnable within 30 days.)
Notify me when updates are available (No standing order will be created).
This Bloomberg BNA report is available on standing order, which ensures you will all receive the latest edition. This report is updated annually and we will send you the latest edition once it has been published. By signing up for standing order you will never have to worry about the timeliness of the information you need. And, you may discontinue standing orders at any time by contacting us at 1.800.372.1033, option 5, or by sending us an email to firstname.lastname@example.org.
Put me on standing order
Notify me when new releases are available (no standing order will be created)