Patent Office Director Vidal Finds OpenSky’s IPR Conduct to be Abuse of Process

Director Vidal issued a careful decision concerning OpenSky’s copycat filings and subsequent conduct in OpenSky Industries, LLC v. VLSI Technology LLC, IPR2021-01064, Paper 102. The conclusion provides a great summary of her findings:

     Viewed as a whole, OpenSky’s conduct has been an abuse of the IPR process, the patent system, and the Office. The totality of OpenSky’s conduct evinces a singular focus on using an AIA proceeding to extort money, from any party willing to pay, and at the expense of the adversarial nature of AIA proceedings. Despite being given the opportunity, OpenSky failed to offer a verifiable, legitimate basis for filing its IPR Petition, which was filed only after a district court awarded large monetary damages keyed to the subject ’759 patent. And the Petition it filed was not generated by OpenSky, but was a copy of Intel’s earlier petition, filed without engaging Intel’s expert or confirming his opinions or willingness to participate. Further, after filing the Petition, OpenSky did not conduct itself in a manner consistent with the AIA’s purpose of exploring patentability issues. OpenSky’s post-institution activity was dominated by attempts to extract money from either Intel or VLSI instead of engaging with the patentability merits.

Seeking an AIA trial for the primary purpose of extorting money, while being willing to forego or sabotage the adversarial process, does not comport with the purpose and legitimate goals of the AIA and is an abuse of process. Opportunistic uses of AIA proceedings harm the IPR process, patent owners, the Office, and the public. Naples, 2; USIJ, 4.16 To safeguard the proper functioning of the patent system, and the confidence therein, it is incumbent on me and the USPTO to protect against that harm.

OpenSky raises issues about the use of the post-grant reviews where the system is used to extract money from parties.  In more conventional proceedings, it is a reminder that “copycat petitions” may be used, but should not be filed without enlisting the support of any witness providing testimony so as to ensure that the witness will be available if needed to testify.

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What’s Important Now in Intellectual Property?

With all that is going on in world events and a pandemic that has raged on for over a year, it’s hard to focus on intellectual property as an important topic to discuss.  But we must because innovation has carried on and patents, trademarks, copyrights, and trade secrets are still valuable assets that have to be pursued and managed.  Inventions are intricately linked to everyday communications on computers and the Internet, by wireless devices, for energy production and management (e.g., battery technologies, light technologies), in economics and finance (cryptocurrency), privacy (encryption), and for medical advancements (vaccines, genomics, robotics, nanodevices). The very way information is collected, analyzed, and harnessed is forever changed by the use of big data, artificial intelligence, and machine learning. These technologies are evolving rapidly every day, pandemic or not.

What are we doing about this?  Patent law has been taking a back seat to more pressing things in today’s world like battles for bodily autonomy, the environment, free speech, human rights, and the mediation of rights in a pandemic.  Scientific and unscientific debates rage over masking, vaccines, and their impact on work and school.  It seems that the amount of information and disinformation is staggering, and technology will be needed again to make sense of it all, control it, and leverage it.

A new year is coming.  We have a new U.S. Patent Office Director.  There’s an opportunity to make improvements we haven’t had reason to address or even discuss before.  Even the way we work has changed with the remote workplace gaining popularity and old institutions opting for new ways to conduct business, law, and health care.

We need to revisit things in patent law, like subject matter eligibility, harnessing the sea of information available to patent stakeholders, the role of the PTAB, and ways to achieve overall higher quality patents and trademarks.

I thought 2021 was going to be better than 2020.  Sadly, for too many of us, it wasn’t.  So we are counting on science, optimism, and the human spirit to bring us back on track in 2022.

Posted in Patent Portfolio Management, Patent Reform, PTAB, Uncategorized | Leave a comment

Thanks to IAM for the Global Leaders 2020 Designation

In case you are interested in a recent interview IAM conducted about US patent law and post-grant activities, the link with my comments is here.  Thanks to IAM for the Global Leaders 2020 award.  To all my colleagues and clients, thank you as well as you are what it is all about.

There has been so much activity of recent in post grant reviews and in family life that I have been kept rather busy.  My apologies to readers for my posting hiatus, which I intend to address now.  Thanks for your interest and support.

Tim Bianchi


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A Split Panel of the Federal Circuit Reverses PTAB Finding of Unpatentability Without Remand in DSS v. Apple

In DSS Technology Management v. Apple Inc., a split panel of the Federal Circuit reversed a finding of patentability by the Patent Trial and Appeal Board (PTAB or the Board), but did so without remanding the case back to the Board for further findings.

In DSS, the Federal Circuit considered two inter partes review decisions finding claims of a patent owned by DSS unpatentable for obviousness.  (Apple Inc. v. DSS Tech. Mgmt., Inc., No. IPR2015-00369 (P.T.A.B. June 17, 2016) (Apple I); Apple Inc. v. DSS Tech. Mgmt., Inc., No. IPR2015-00373, (P.T.A.B. June 17, 2016) (Apple II)).  The panel majority (J. O’Malley and J. Reyna) felt the Board’s decision lacked sufficient explanation and that none could be found in the record.

The ’290 Patent

Claims 1-4 and 9-10 of DSS’s U.S. Pat. No. 6,128,290, which issued in 2000, are directed to a wireless communication network for a single host device and multiple peripheral devices.  The ’290 patent discloses a data network for bidirectional wireless data communications between a host or server microcomputer (referred to as a personal digital assistant or “PDA”) and a plurality of peripheral devices that the specification refers to as personal electronic accessories or “PEAs.”  The resulting design is asserted to be inexpensive, simple, low power, and to incur less interference from similar other systems.  FIG. 1 depicts a server microcomputer, shown as PDA 11, and a plurality of peripheral units 21 to 29:

The ’290 patent teaches that the transmitters within the host or server microcomputer and the peripheral units in the data network operate in a “low duty cycle pulsed mode of operation.”  Claim 1 is representative of claims 1-4 and 9-10 in appeal:

1. A data network system for effecting coordinated operation of a plurality of electronic devices, said system comprising:

a server microcomputer unit;

a plurality of peripheral units which are battery powered and portable, which provide either input information from the user or output information to the user, and which are adapted to operate within short range of said server unit;

said server microcomputer incorporating an RF [radio frequency] transmitter for sending commands and synchronizing information to said peripheral units;

said peripheral units each including an RF receiver for detecting said commands and synchronizing information and including also an RF transmitter for sending input information from the user to said server microcomputer;

said server microcomputer including a receiver for receiving input information transmitted from said peripheral units;

said server and peripheral transmitters being energized in low duty cycle RF bursts at intervals determined by a code sequence which is timed in relation to said synchronizing information.

The DSS panel determined that the only disputed limitation was the last limitation, which requires that the transmitters on both the server microcomputer and the peripheral units must be energized in “low duty cycle RF bursts.”

The IPRs

To institute the resulting IPRs, the Board relied on two pieces of prior art in the IPR: U.S. Patent No. 5,241,542 to Natarajan et al. (“Natarajan”), and U.S. Patent No. 4,887,266 to Neve et al. (“Neve”). In its final written decisions, the Board found that the combination of these references rendered obvious all of the challenged claims of the ’290 patent.  Natarajan was relied upon for its power conservative wireless communications with portable units.  It provided time slots when the mobile units could turn communications off because it was outside its appointed time slot for receiving and transmitting data.

In the IPRs, Apple argued that because the mobile units of Natarjan were operating in “low duty cycle RF bursts” it would have been obvious for the base station to operate in an analogous manner.  Apple argued that the base and mobile stations have the same physical structure and would operate similarly using the known technique applied to the mobile units of Natarajan.  DSS countered that Natarjan says nothing about applying the low power approach to the base station transmitter.  DSS also pointed out hat the base station used a different communication scheme than the mobile units, because it transmitted continuously.  The Board concluded “that a person of ordinary skill in the art would have been motivated by Natarajan to apply the same power-conserving techniques to  base units as it is disclosed with respect to mobile units, as well as that it would have been within the skill of the ordinarily skilled artisan to do so.”

The Board found “no persuasive evidence of record that it would have been ‘uniquely challenging or difficult for one of ordinary skill in the art’ to do so.” Id. (quoting Leapfrog Enters., Inc. v. Fisher-Price, Inc.). The Board noted that, “as the [Supreme] Court explained in KSR, the skilled artisan is ‘a person of ordinary creativity, not an automaton.’” (quoting KSR Int’l Co. v. Teleflex Inc.).  It ultimately found claims 1-2 and 9-10 obvious over Natarajan in view of of Neve, and DSS appealed.

DSS’s Federal Circuit Appeal

The Federal Circuit majority summarized the issue on appeal:

The sole issue on appeal is the Board’s finding that it would have been obvious to modify the base station transmitter in Natarajan to be “energized in low duty cycle RF bursts,” as required by the claims of the ’290 patent.

The majority launched into an analysis of the role of “common sense and common knowledge” in the obviousness inquiry.  Three caveats were noted in applying “common sense”:

  • First, common sense is typically invoked to provide a known motivation to combine, not to supply a missing claim limitation. (citing Arendi S.A.R.L. v. Apple Inc., 832 F.3d 1355, 1361 (Fed. Cir. 2016).
  • Second, we have invoked common sense to fill in a missing limitation only when “the limitation in question was unusually simple and the technology particularly straightforward.” Id. at 1362 (citing Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1328 (Fed. Cir. 2009).
  • Third, the cases “repeatedly warn that references to ‘common sense’—whether to supply a motivation to combine or a missing limitation—cannot be used as a wholesale substitute for reasoned analysis and evidentiary support, especially when dealing with a limitation missing from the prior art references specified.” Id.

The majority analogized the Board’s reference to “ordinary creativity” to the “common sense” considered in Arendi, and that calls for a “searching” inquiry.  The majority observed that the limitation at issue is not “unusually  simple” and the technology is not “particularly straightforward.”  It relates to a complex communications protocol that enables the claimed low duty cycle mode of operation.  The majority felt that the ’290 patent contemplated a server that was itself a mobile device and was stated itself to have an “extremely low power consumption” and that the pulsed mode of operation was critical to achieving this goal.  Therefore, the majority found that the Board did not meet the standard set forth in Arendi.

The majority isolated the Board’s analysis on this point:

The full extent of the Board’s analysis is contained in a single paragraph. . . . After acknowledging that Natarajan does not disclose a base unit transmitter that uses the same power conservation technique, the Board concluded that a person of ordinary skill would have been motivated to modify Natarajan to incorporate such a technique into a base unit transmitter and that such a modification would have been within the skill of the ordinarily skilled artisan. . . . In reaching these conclusions, the Board made no further citation to the record. . . . It referred instead to the “ordinary creativity” of the skilled artisan. Id. (quoting KSR, 550 U.S. at 420–21). This is not enough to satisfy the Arendi standard.

The majority was also critical of the Board’s reliance on Apple’s expert, Dr. Hu:

To the extent the Board’s obviousness findings were based on Dr. Hu’s testimony—which is questionable, because the Board never cited her testimony directly—her “conclusory statements and unspecific expert testimony” are insufficient to support the Board’s findings.

The majority concluded that the record was simply insufficient to warrant a remand for further findings and reversed the decision:

We also find “that this is not a case where a more reasoned explanation than that provided by the Board can be gleaned from the record.” Id. Dr. Hu’s testimony suffers from the serious deficiencies that we have discussed above, and Apple suggests no other evidence that might remedy those defects. Apple failed to meet its burden of establishing that the challenged claims of the ’290 patent were obvious. We therefore reverse the Board’s finding of unpatentability.

The Dissent By Judge Newman

Judge Newman disagreed with the majority, stating that the proper decision was to remand for further explanation or “to decide the question of law” (presumably, obviousness).  She asserted that the majority decision did neither.  Judge Newman opined that the Board adequately explained its decision of unpatentability, and went into great detail to document the findings of the Board.  She found the testimony of Dr. Hu, which the majority characterized as “conclusory” and “unspecific” as instead “directly on the point for which it was cited.”  She also faulted the majority for not discussing or reviewing the evidence cited by the PTAB in its decision.  Finally, Judge Newman explained that reversal is not a proper remedy for an inadequate explanation in the Board’s final written decision.


This case is valuable to show the depth of review that arises from IPR proceedings at the Board and Federal Circuit.  It also provides valuable insight as to how the Federal Circuit interprets the use of “common sense” obviousness assertions in IPRs, post-KSR.  It also raises discussion about the ramifications of an undeveloped record on appeal.

Posted in claim challenges, Federal Circuit, Federal Circuit Review of PTAB Proceedings, inter partes review, IPR, prior art, Reversal With No Remand | Tagged , , , , , , , , , , , | Leave a comment

PTO Brief Argues Why PTAB Can Issue Decisions On Remand From FedCir

Under the America Invents Act IPRs are supposed to be completed with a final written decision no later than a maximum of 18 mos after institution. But if the FedCir remands for further findings on appeal can the PTAB issue a decision on remand past the 18 mos? “Yes” says the USPTO, and in a recent brief it argues why it can:

Posted in America Invents Act, Federal Circuit, remand to PTAB, Uncategorized | Tagged , , , , , , , , | Leave a comment

Complex Claim Construction Issues in Knowles Electronics v. Cirrus Logic

A recent Federal Circuit case demonstrates the complexity of resolving difficult claim construction issues in multiple agency and court proceedings.  In Knowles Electronics v. Cirrus Logic the Federal Circuit declined to apply its own prior claim interpretation of the same term of the same claims of the same patent.

U.S. Patent No. 6,781,231 (“the ’231 patent”) entitled “Microelectromechanical System Package with Environmental and Interference Shield,” was issued to Knowles Electronics, LLC (“Knowles”) in 2004.  The ’231 patent discloses microelectromechanical system (“MEMS”) packages comprising a substrate, a microphone, and a cover accommodating the microphone. The MEMS packages shield the microphone from an interference signal or an environmental condition,  and improve over the prior art’s drawbacks associated with manufacturing these housings, such as lead time, cost, and tooling.

Independent claim 1 is illustrative of the invention and recites:

A microelectromechanical system package comprising: a microelectromechanical system microphone;
a substrate comprising a surface for supporting the microelectromechanical microphone;
a cover comprising a conductive layer having a center portion bounded by a peripheral edge portion; and
a housing formed by connecting the peripheral edge portion of the cover to the substrate, the center portion of the cover spaced from the surface of the substrate to accommodate the microelectromechanical system microphone, the housing including an acoustic port for allowing an acoustic signal to reach the microelectromechanical system microphone wherein the housing provides protection from an interference signal.

Three inter partes reexaminations were filed by Cirrus Logic, Inc. (“Cirrus”) against the ’231 patent and were later merged. (U.S. Control. Nos. 95/000,509, 95/001,251, and 95/001,363).  Ultimately claims 1-4 and 23-27 were reexamined and rejected based on anticipation in view of van Halteren (WO 01/414497 A1) and for lack of written description.  Knowles appealed the rejections to the Patent Trial and Appeal Board (PTAB).

On appeal to the PTAB, different claim construction arguments were proffered by Knowles, including one that the PTAB should adopt an interpretation of “package” in the preamble based on a prior decision in an International Trade Commission (ITC) proceeding which was considered and upheld by the Federal Circuit in MEMS Tech. Berhad v. Int’l Trade Comm’n, 447 F. App’x 142 (Fed. Cir. 2011).  Under this definition, Knowles maintained, van Halteren would not anticipate the claims.

But the PTAB declined to apply the Federal Circuit’s prior decision construing the same term of the same claims of the same patent, concluding that the Board was not bound by the district court’s claim constructions.  PTAB Op. *12 (citing In re Trans Tex. Holdings Corp., 498 F.3d 1290, 1301 (Fed. Cir. 2007) (“We conclude that the Board was not bound by the district court’s claim construction. . . .”)).  The PTAB affirmed the examiner and upheld the rejections.

After a failed request for rehearing, Knowles appealed the decision to the Federal Circuit. Knowles argued “[t]he [PTAB] should have read MEMS Technology and concluded that a ‘package’ requires a ‘self-contained unit[’] . . . and that this unit must be ‘mountable.’”   Knowles’ position was that the PTAB has an obligation to “evaluate a previous judicial interpretation of disputed claims and to determine whether it is consistent with the [BRI] of the term.”

The panel majority (Judges Wallach and Chen) did not consider whether the PTAB was bound to apply the Federal Circuit’s decision in MEMS Technology, but explained that it not agree that the PTAB’s claim construction conflicts with MEMS Technology:

In MEMS Technology, we upheld the International Trade Commission’s construction of the term “package” in the ’231 patent’s preamble to mean “a self-contained unit that has two levels of connection, to the device and to a circuit (or other system).” 447 F .App’x at 159; see id. (affirming the ITC’s rejection of an anticipation claim because the disputed prior art “does not disclose first and second levels of electrical connection”).

Thus, the claim construction in MEMS Technology did not require that a package be mounted via surface or through-hole mounts, such that even if we were to look to MEMS Technology, we would find no inconsistency with the PTAB’s construction of the claim term “package” here.

Consequently, the panel majority affirmed the PTAB’s decision on unpatentability.

Judge Newman dissented:

I write in concern for perpetuation of the erroneous position that the PTAB need not apply the prior final judicial decision of the same issue of the same claims of the same patent. [] This error not only produces an incorrect result in this case, but will further impart uncertainty to proceedings under the America Invents Act. The purpose whereby the PTAB was created as an agency tribunal, in order to provide stable law and economical determination of patent validity, is negated when final adjudication in a court of last resort may be ignored, and the issue litigated afresh in the agency tribunal.

Judge Newman invoked B & B Hardware, Inc. v. Hargis Indus., Inc., 135 S. Ct. 1293, 1303, 1305–06 (2015) for the proposition that a prior judicial decision resolving the same issue is accorded preclusive effect not only in subsequent court proceedings but also before an administrative agency, subject only to the established equitable and due process exceptions to preclusion.  She faulted the PTAB for adopting the opposite position and the majority for ignoring that part of the PTAB’s decision:

However, the PTAB stated that “precedent makes clear that the USPTO is not bound in reexamination proceedings by claim constructions produced by a court.” PTAB Op. *12. While precedent has previously addressed the effect of a prior district court claim construction on a subsequent PTO proceeding, never before has a final claim construction by this court been held not to be preclusive.

Here the claim construction was decided by the Federal Circuit, as a matter of law, in MEMS Technology Berhad v. International Trade Commission, 447 F. App’x 142 (Fed. Cir. 2011). No equitable or due process exception to issue preclusion is here asserted; thus preclusion should apply. The majority declines to discuss this question, which is presented on this appeal. By this silence, my colleagues are reinforcing this incorrect position. I respectfully dissent.

Judge Newman observed that the majority based its decision partly on the Power Integrations case.  She distinguished the instant case (involving a decision from the Federal Circuit) from Power Integrations, because Power Integrations involved only a district court decision, thereby allowing the Board not to be bound to a district court claim construction.

These decisions are complex because there are two claim construction standards at play (BRI v. the narrower Phillips district court construction), different deciding bodies (PTO, district court, PTAB, ITC, and Federal Circuit), and different proceedings (district court trial, appellate review, ex parte examination, ex parte reexamination, inter partes reexamination, inter partes review, ex parte and inter partes appeals).  With these differences there are no easy analyses and distinct and definitive lines of issue preclusion are hard to draw.

Posted in America Invents Act, BRI v. Phillips Construction Issues, Broadest Reasonable Interpretation standard, claim challenges, Claim Construction, Claim Preclusion, Federal Circuit Review of PTAB Proceedings, inter partes reexamination, Issue Preclusion, ITC, prior art, PTAB, reexamination generally | Tagged , , , , , , , , , , , , , | Leave a comment

PTAB Expanded Panel Decides Sovereign Immunity Is Waived For District Court Patent Assertions by State Entities

Sovereign immunity has been a topic of great debate ever since the Patent Trial and Appeal Board applied it to dismiss inter partes reviews (IPRs) involving state owned patent rights.  In Covidien v. University of Florida Research Foundation the Board dismissed three IPRs based on sovereign immunity.  (IPR2016-01274, -01275, -01276.)

Other universities caught wind of the Covidien decision and invoked their own sovereign immunity defenses to attempt to avoid IPRs of their patents.  For example, the University of Minnesota asserted the sovereign immunity defense in its IPR battle with Ericsson.  Ericsson v. Regents of the University of Minnesota, IPR2017-01186, -01197, -01200, -01213, -01214, and -01219.

The University of Minnesota filed a motion to dismiss the Ericsson IPRs based on sovereign immunity.  Ericsson opposed the motion, but did not dispute that the University could claim sovereign immunity as a state entity.  Ericsson and the University had a basic difference of opinion about whether sovereign immunity could be a valid defense in IPRs.

On December 19, 2017 an expanded panel of seven administrative patent judges of the Patent Trial and Appeal Board decided that while sovereign immunity applies to state entities, such as the University of Minnesota, it is waived when a state entity files an action in civil court claiming patent infringement:

We agree with Petitioner [Ericsson] that the filing of an action in federal court alleging infringement effectively waives Patent Owner’s Eleventh Amendment immunity defense.

The majority of the Board denied the University’s motion to dismiss the IPRs based on sovereign immunity because the University had filed suit in district court, waiving its sovereign immunity defense.

A concurring opinion was authored by Judge Jennifer S. Bisk, where she concluded that sovereign immunity was not a defense for use in IPRs based on the differences between IPRs and district court proceedings.  Therefore she reached the same end result that sovereign immunity does not apply here, but for different reasons.

With this ruling the University of Minnesota will be back to work on these IPR proceedings unless it can find a way to request interlocutory relief from this decision.

Posted in inter partes review, motion practice, PTAB, serial petitions, States rights and sovereign immunity, Uncategorized | Tagged , , , , , , , , , , | Leave a comment

PTAB Boardside Chat Provides Statistics About Multiple IPR Petition Filings

On October 24, 2017, PTAB Chief Judge David Ruschke and Lead Judge William Saindon conducted a webinar covering filing statistics for IPR petition filings, and in particular how multiple petitions have fared statistically in the PTAB.  They also announced three informative decisions relating to the 35 USC § 325(d) issue:

  • IPR2016-01571 – Unified Patents, Inc. v. Berman
  • IPR2017-00739 – Hospira, Inc. v. Genentech
  • IPR2017-00777 – Cultec, Inc. v. Stormtech LLC

The slides of the October Boardside Chat can be found here.

Some of the takeaways from the October Boardside Chat are:

  • The PTAB wants each petitioner to explain why it filed a subsequent IPR petition, and will be especially careful about petitions filed after a decision on institution.  (See the informative decisions, above.)   This is to avoid the situation where a petitioner uses a first petition as a “roadmap” to make a subsequent petition filing.
  • Petitioners need to review the following seven factors and the precedential General Plastics decision (General Plastic Industrial Co. v. Canon Kabushiki Kaisha, IPRs: 2016-01357, 2016-01358, 2016-01359, 2016-01360, 2016-01361)
      1. whether the same petitioner previously filed a petition directed to the same claims of the same patent;
      2. whether at the time of filing of the first petition the petitioner knew or should have known of the prior art asserted in the second petition;
      3. whether at the time of filing of the second petition the petitioner already received the patent owner’s preliminary response to the first petition or received the Board’s decision on whether to institute review in the first petition;
      4. length of time that elapsed between the time the petitioner learned of the prior art asserted in the second petition and the filing of the second petition;
      5. whether the petitioner provides adequate explanation for the time elapsed between the filings of multiple petitions directed to the same claims of the same patent;
      6. finite resources of the Board; and
      7. requirement under 35 U.S.C. § 316(a)(11) to issue a final determination not later than 1 year after the date on which the Director notices institution of review.


      Judge Ruschke invited stakeholders to provide feedback and further questions for any other statistical information that might be of use for the patent bar to advise its clients.  It was clear from the tenor of the discussion that the PTAB wanted to set the record straight on serial IPR petition practice, and to quell some the concerns raised by certain commentators about heavy-handed post-grant proceedings using multiple IPR petitions.


Posted in America Invents Act, Boardside Chat Report, inter partes review, IPR, serial petitions, Uncategorized | Tagged , , , | Leave a comment

10 Minute Webinar on IPR Claim Amendments In View of Aqua Products

If you are interested in knowing more about amendments in IPR proceedings and the practical impact of the Federal Circuit’s en banc Aqua Products decision, click here to view a brief 10 minute presentation.

Posted in Aqua Products, Federal Circuit Review of PTAB Proceedings, inter partes review, Motion to Amend, PTAB, Uncategorized, Webinar | Tagged , , , , , , , | Leave a comment

Federal Circuit’s Aqua Products Decision Clarifies Burden on IPR Petitioner to Challenge Amended Claims

On October 4, 2017, the Federal Circuit issued a lengthy decision in Aqua Products v. Matal, spanning five opinions and 148 pages, which addressed the proper allocation of the burden of proof when amended claims are offered during inter partes review proceedings (“IPRs”).  Aqua Prods. v. Matal, 2017 U.S. App. LEXIS 19293.

The case concerns U.S. Patent No. 8,273,183, relating to a self-propelled cleaning apparatus for cleaning a submerged surface of a pool or tank, assigned to Aqua Products, Inc, (“Aqua”).  In the underlying IPR proceeding (IPR2013-00159), the Board denied Aqua’s motion to amend various claims of the ’183 patent.  The PTAB had followed its prior practice for deciding motions to amend, which placed a substantive burden of proving patentability on the patent owner.  MasterImage 3D, Inc. v. RealD Inc., No. IPR2015–00040, at *2–4 (P.T.A.B. July 15, 2015) (clarifying Idle Free Sys., Inc. v. Bergstrom, Inc., No. IPR2012–00027, at *4 (P.T.A.B. June 11, 2013)).  Aqua appealed the final written decision of the Board and a panel of the Federal Circuit concluded that the Board did not abuse its discretion in denying Aqua’s amendments.  Aqua requested en banc rehearing, which was granted and the court vacated the panel decision.

Upon en banc rehearing the case, the court interpreted 35 U.S.C. § 316(e) as placing the burden to prove all propositions of claim unpatentability on the petitioner, including amended claims.  To the extent they are inconsistent with its decision in Aqua Products, the court overruled its prior decisions in Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292 (Fed. Cir. 2015); Prolitec, Inc. v. ScentAir Techs., Inc., 807 F.3d 1353 (Fed. Cir. 2015), petition for reh’g pending; Synopsys, Inc. v. Mentor Graphics Corp., 814 F.3d 1309 (Fed. Cir. 2016); and Nike, Inc. v. Adidas AG, 812 F.3d 1326 (Fed. Cir. 2016).  The court vacated the final written decision of the Board insofar as it denied the patent owner’s motion to amend the patent, and remanded it for the Board to issue a final decision under § 318(a) assessing the patentability of the proposed substitute claims without placing the burden of persuasion on the patent owner.

Entry of a Motion Into the IPR Distinguished From Entry of a Claim Into the Patent

The majority opinion distinguished the entry of a motion to amend into the IPR (motions to amend are the vehicle for proposing amended claims in IPR proceedings) from the substantive burden of proof that must be satisfied for entry of an amended claim into the patent:

“. . . any propositions of substantive unpatentability for amended claims are assessed following entry of the amended claims into the IPR proceeding, under the standards that apply to all claims in the proceeding.”

(Page 22, italics in original.)  The court summarized the amendment process:

“. . .  we believe that the only reasonable reading of the burden imposed on the movant in § 316(d) is that the patent owner must satisfy the Board that the statutory criteria in § 316(d)(1)(a)–(b) and § 316(d)(3) are met and that any reasonable procedural obligations imposed by the Director are satisfied before the amendment is entered into the IPR. Only once the proposed amended claims are entered into the IPR does the question of burdens of proof or persuasion on propositions of unpatentability come into play. It is at that point, accordingly, that § 316(e) governs, placing that burden onto the petitioner.”

(Page 24.)

Effects On The Settlement of IPRs

The majority opinion suggested how the the Board could consider a motion to amend in case there is settlement between the parties:

“If a settlement occurs and the IPR is terminated, no certificate incorporating the amendment into the patent ever issues. Section 318(b) makes clear that no certificate either reaffirming a challenged claim or substituting an amended claim for a challenged one issues unless and until the Board chooses to issue a final judgment under § 318(a) in which it assesses the patentability of both categories of claims. . . .

The final sentence of § 317(a) gives the Board the option to proceed to final judgment in any proceeding where the original petitioners choose not to continue their challenge. The Board might do this for any number of reasons. . . .

Should the Board elect to continue to a final written decision in this scenario, § 318(a) requires the Board to undertake a patentability analysis on all original and amended claims in the proceeding. Thus, it is at that point, and not earlier, that the statute contemplates consideration of an amended claim’s patentability. As the Supreme Court recognized in Cuozzo, 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 by reference to the evidence of record in the IPR. . . .”

(Pages 34-35.)

The Board Must Base Its Patentability Determinations on the Entirety of the Record Before It

The court’s inquiry about whether the Board may sua sponte raise patentability challenges to the amended claims was “reserved for another day,” but the court did reiterate the panel decision that the Board may base its patentability determinations of amended claims on the entire record before it, and not limit itself solely on the face of the motion to amend.  (Pages 60-62.)  The court noted the Board’s decision to reject Aqua’s proposed amended claims without consideration of the entirety of the IPR record as an independent basis for vacating and remanding the matter to the Board.


Patent owners and petitioners routinely argued issues of patentability of proposed claim amendments prior to Aqua Products.  However, Aqua Products shifted the analysis from whether the patent owner proved patentability, to whether the petitioner demonstrated by a preponderance of the evidence that an amended claim is unpatentable.  Post Aqua Products, petitioners must assume that a motion to amend claims will get more of the Board’s attention, and the petitioner will bear more responsibility to make a full and convincing record of unpatentability of amended claims.  If it turns out that the Board grants more motions to amend post Aqua Products, petitioners will have to more carefully consider the availability of narrowing amendments that the patent owner could assert before recommending an IPR petition strategy.  Similarly, patent owners will have to decide if the guidance provided by Aqua Products will merit more frequent filing of motions to amend or if it is preferable to procure amended claims via reissue or continuation practice.


Posted in Adjudicative instead of examinatorial, Broadest Reasonable Interpretation standard, claim challenges, estoppel from administrative proceeding, Federal Circuit Review of PTAB Proceedings, Motion to Amend, preponderance of evidence, reexamination generally, Settlements in Post-Grant Proceedings, Termination of Post-Grant Proceedings | Tagged , , , , , , , , , , , , , , , , , , , , , , | Leave a comment