December 22, 2017

Aqua Holds Water; Board’s Denial of Motion to Amend Vacated Because Board Improperly Put Burden on Patent Owner

By Bryan K. Wheelock, Principal

In Bosch Automotive Service Solutions, LLC v. Matal, [2015-1928] (December 22, 2017), the Federal Circuit affirmed the Board’s finding of unpatentability of claims 1, 4–15, and 20–22, of U.S. Patent No. 6,904,796, on a remote tire monitoring system, but vacated and remanded the denial of Bosch’s motion to amend as to proposed substitute claims 23–38.

On appeal, Bosch primarily argued lack of motivation to combine, but the Federal Circuit was not persuaded, noting that the prior art must be considered for everything it teaches by way of technology and is “not limited to the particular invention it is describing and attempting to protect.”  Bosch also argued commercial success, but the Federal Circuit found that Bosch failed to prove commercial success with a nexus to the claims.  In particular, the Federal Circuit agreed that a declarant’s “understanding” that the products are covered by the patent was an insufficient foundation.

As to Bosch’s Motion to Amend, the Board rejected Bosch’s proposed amended claims 23–35 as indefinite under 35 U.S.C. § 112, ¶ 2, and Bosch’s proposed amended claims 36–38 as unpatentable over the prior art.  Among other arguments, Bosch challenged the Board’s rejection of both sets of proposed amended claims on the grounds that the Board impermissibly placed the burden on Bosch to establish patentability.

As to claims 23-35, the Federal Circuit found that the Board impermissibly assigned the burden of proof to Bosch, and vacated the Board’s denial of Bosch’s motion to amend with respect to proposed claims 23–35 and remand for the Board to evaluate the patentability of the proposed amended claims consistent with Aqua Products.  Similarly, with respect to claims 36-38, the Federal Circuit found the Board improperly placed the burden of proving patentability over the prior art on Bosch, and vacated and remanded the motion to amend these claims as well.