Applying its own precedent, the US Court of Appeals for the
Federal Circuit confirmed that the burden remains on the patent
owner to demonstrate the patentability of substitute claims over
the art of record in an inter partes review (IPR), and
therefore the Patent Trial and Appeal Board (PTAB or Board) need
only consider those arguments raised by the patent owner for
patentability. In re Aqua Products, Inc. Case No. 15-1177
(Fed. Cir., May 25, 2016) (Prost, J).
Aqua Products sued Zodiac alleging
infringement of a patent relating to a swimming pool cleaner. In
response, Zodiac filed an IPR petition. During the IPR proceeding,
the PTAB denied Aqua Products' motion to amend claims. Aqua
Products appealed, arguing that the PTAB erred by placing the
burden on the patentee to show non-obviousness. Aqua Products also
argued that the PTAB abused its discretion by not considering all
of the new claim limitations and the objective indicia of
non-obviousness.
