December 28, 2017

One More Dribble from Aqua

By Gregory S. DeLassus, Associate

As explained in a recent post about Bosch Automotive Service v. Matal, the Federal Circuit held that the Aqua Products decision puts the burden on the IPR petitioner to show that a patentee’s proposed amendments do not comply with 35 U.S.C. §112.

On the way to placing the §112 burden on the IPR petitioner, however, the Federal Circuit said something very curious.  The court notes (slip op. at 21, n.6) that “Bosch did not raise the issue … of whether the Board has the statutory authority to reject proposed amended claims that introduce indefinite language on §112 grounds. This issue is thus not before us.”

It is equally true that neither did Bosch raise the issue of whether the sun rises in the east. One might be excused for thinking that the Board’s authority to consider §112 issues is, like the sun’s eastern rising, a point so obviously true as not to be worth contesting.

Nevertheless, the fact that the court — without prompting — troubled itself to note that this point had not been raised suggests that the court thinks that it might be worth raising.

In other words, the next time that a patent owner proposes amendments and the petitioner objects on §112 grounds, the patent owner might do well to file a response arguing that the Board lacks statutory authority to consider the matter, so that this issue is properly preserved for later appeal.