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Aqua Products, Inc. v. Matal

872 F.3d 1290 (2017)

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Aqua Products, Inc. v. Matal

United States Court of Appeals for the Federal Circuit

872 F.3d 1290 (2017)

Facts

Aqua Products, Inc. (plaintiff) held a patent on an automated swimming-pool cleaner. The patent was known as the ‘183 Patent. Zodiac Pool Systems petitioned the Patent Trial and Appeal Board (the board) (defendant) for inter partes preview on claims of the ‘183 Patent. Zodiac asserted that the claims were invalid in light of several prior art references. Aqua moved to substitute the claims. Aqua asserted that the substitute claims were permissible because they did not enlarge the scope of the original claims or introduce new matter. The board denied Aqua’s motion to amend. The board found that although Aqua’s amendments complied with the requirements of the law, Aqua failed to prove the substitute claims were patentable. Aqua appealed, arguing that it did not bear the burden of proving the patentability of its proposed substitute claims. A panel of the Federal Circuit rejected Aqua’s argument based on the court’s precedent. Previous cases had upheld the board’s approach of allocating to the patentee the burden of showing that proposed amendments would overcome the art of record. Aqua sought rehearing of the issue en banc.

Rule of Law

Issue

Holding and Reasoning (O’Malley, J.)

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