In Re: Aqua Products, Inc.
823 F.3d 1369
Fed. Cir.2016Background
- Aqua Products owns U.S. Patent No. 8,273,183, which claims an automated pool cleaner propelled by an angled jet that produces a forward force and a normal (downward) force to keep wheels in contact with the pool floor.
- Zodiac petitioned for inter partes review (IPR) challenging several claims; Board instituted trial on most challenged claims.
- Aqua sought to amend by substituting claims 22–24, adding limitations including (a) a jet that creates a downward vector force rear of the front wheels (vector limitation), (b) wheels that control directional movement, (c) four wheels, and (d) that the jet shoots filtered water.
- Aqua’s motion to amend argued only that the Henkin + Myers prior-art combination failed to disclose the vector limitation; it did not argue that the other added limitations or objective indicia distinguished the combination.
- The Patent Trial and Appeal Board denied the motion, finding Henkin taught the vector limitation and treating the other limitations as within ordinary skill without detailed analysis.
- Aqua appealed, arguing that the Board’s regulations and practice improperly place the burden on the patentee and that the Board failed to consider all limitations and objective indicia.
Issues
| Issue | Plaintiff's Argument (Aqua) | Defendant's Argument (Board/Zodiac) | Held |
|---|---|---|---|
| Whether PTO regulations requiring patentee to show amended claims are patentable over art are lawful | Regulations and Board practice impermissibly shift burden to patentee; unsupported by statute | Regulations are consistent with AIA and properly interpreted by Board | Court affirmed precedent upholding Board practice; cannot revisit question here |
| Whether Board abused discretion by denying motion without analyzing all added limitations | Board failed to consider the four-wheel, directional-movement, and filtered-water limitations | Aqua bore burden and only raised the vector limitation; Board needed to address only arguments presented | No abuse of discretion; Board properly addressed Aqua's sole argument |
| Whether Board failed to consider objective indicia of non-obviousness | Aqua argued commercial success and possible copying show non-obviousness | Aqua did not tie objective indicia to the Henkin/Myers combination in its motion | No abuse; Board not required to consider arguments not raised in support of patentability |
| Whether Henkin + Myers fail to teach the vector limitation | Aqua: prior art aimed at random movement, not stability; thus does not teach claimed vector limitation | Board: Henkin explicitly teaches selecting jet angle to yield downward and forward thrust components | Held that Henkin teaches the vector limitation; Board’s rebuttal adequate |
Key Cases Cited
- Dickinson v. Zurko, 527 U.S. 150 (APA standard of review for PTO adjudications)
- In re Sullivan, 362 F.3d 1324 (Fed. Cir. 2004) (review standard and deference to PTO regulation interpretation)
- Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292 (Fed. Cir. 2015) (upholding Board approach that patentee must show amended claims overcome art of record)
- Prolitec, Inc. v. ScentAir Techs., Inc., 807 F.3d 1353 (Fed. Cir. 2015) (affirming Board’s regulations on motions to amend)
- Nike, Inc. v. Adidas AG, 812 F.3d 1326 (Fed. Cir. 2016) (Board’s regulations on motions to amend consistent with AIA)