Zodiac Pool Systems, Inc. v. Aqua Products, Inc.

In a Final Written Decision the Patent Trial and Appeal Board (PTAB) found all instituted claims unpatentable and denied patent owner’s motion to amend claims.  Zodiac Pool Systems, Inc. v. Aqua Products, Inc., IPR2013-00159 (PTAB, Aug. 22, 2014) (Arpin, J.).

The petitioner filed for inter partes review (IPR), challenging certain claims of Aqua Products’ patent.  The Board instituted an IPR with respect to many, but not all, of the challenged claims.  Zodiac asserted both anticipation and obviousness arguments based on four prior art patents.  Aqua Products argued the claims were patentable and that evidence of secondary considerations of non-obviousness overcame any case of prima facie obviousness.  Aqua Products also filed a Motion to Amend Claims, proposing to substitute new claims that amended some of the challenged claims.

The Board concluded the challenged claims were not patentable (on various anticipation and obviousness grounds) and further found that Aqua Products failed to show that any alleged secondary considerations of non-obviousness outweighed the strong evidence of obviousness.  In particular, the Board explained that Aqua Products failed to show a nexus between the claims and the alleged secondary considerations (commercial success, copying, long felt need, failure of others to solve the problems purportedly solved by the patent).

With respect to the Motion to Amend Claims, the Board found that Aqua Products’ amendments properly narrowed the claims, were definite and had written description support. However, the Board found that Aqua Products failed to prove the proposed substitute claims were patentable over an obviousness combination asserted in the original petition.

The Board also denied the patent owner’s motion to exclude with respect to the declaration of petitioner’s technical expert because Aqua Products failed to timely object to the declaration. Parties must object within five business days of receiving evidence, but Aqua Products did not object to the declaration until it filed its motion to exclude, over 20 business days after receiving the declaration.  The Board did however grant the motion wih respect to portions of a declaration by the petitioner that referred to documents that were either not produced or produced in a foreign language and no translation was provided.