Aqua Products, Inc. v. Matal

872 F.3d 1290 (2017)

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Nature of the Case

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Facts

The '183 patent discloses a jet-propelled pool cleaner with controlled directional movement and without an electric drive motor. The parties began litigating questions of infringement and validity related to this patent in district court. While that litigation was pending, Zodiac Pool Systems, Inc. (D) petitioned the Board for inter partes review (IPR) on claims 1-14, 16, and 19-21 of the '183 patent, asserting invalidity under 35 U.S.C. § 102 and § 103 in light of several prior art references. The Board instituted an IPR on claims 1-9, 13, 14, 16, and 19-21 of the '183 patent, but not on claims 10-12. P then moved to substitute claims 1, 8, and 20 of the '183 patent with proposed claims 22, 23, and 24, respectively. P asserted that substitute claims 22-24 complied with §316(d) because they did not enlarge the scope of the original claims or introduce new matter. The Board denied P's motion to amend because P had failed to prove the substitute claims were patentable. P appealed that decision to this court. Relying on the plain language of §316(e), P argued that it did not bear the burden of proving the patentability of its proposed substitute claims. The panel rejected P's argument based on this court's precedent, which 'has upheld the Board's approach of allocating to the patentee the burden of showing that its proposed amendments would overcome the art of record.' P sought rehearing en banc of that panel decision.