Denial of motion to amend claims in inter partes review is appropriate when not all claim amendments are discussed

In Re: Aqua Products, Inc., No. 2015-1177 (Fed. Cir. May 25, 2016)

Aqua Products, Inc. (patent owner) appealed from a written decision of the Patent Trial and Appeal Board (PTAB) in an inter partes review (IPR) of a patent concerning automated swimming pool cleaners. The PTAB denied the patent owner’s motion to substitute new claims, and the Federal Circuit affirmed the PTAB’s decision.

The Federal Circuit first explained that a motion to amend will only be granted if the patent owner demonstrates that the proposed amendments would make the claims patentable over the known prior art: “Given our precedent, this panel cannot revisit the question of whether the PTAB may require the patentee to demonstrate the patentability of substitute claims over the art of record.”

The Federal Circuit then affirmed that the PTAB did not abuse its discretion by denying the motion to amend. The patent owner moved to substitute new claims that included four additional limitations. The patent owner identified in the record where it described these limitations and distinguished them from the prior art, but in its motion to amend, the patent owner only argued that the substitute claims were patentable based on one of the four limitations. The Federal Circuit held that the PTAB was under no obligation to consider the other three limitations that were not separately argued in the motion.

A copy of the opinion can be found here ►