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Bosch Automotive Service Solutions, LLC v. Matal

PTAB May Not Assign to Patent Owners Burden to Prove Definiteness of Proposed Substitute Claims

Bosch Automotive Service Solutions, LLC v. Matal, 2017 U.S. App. LEXIS 26313 (Fed. Cir. Dec. 22, 2017) (Newman, CHEN, Hughes) (PTAB) 2 of 5 stars)

Fed Cir part-affirms, part-vacates IPR decision of unpatentability. The opinion affirms as to the unpatentability finding, but vacates the Board’s denial of Bosch’s contingent motion to amend. Bosch’s patent related to a handheld tool for activating a tire pressure monitoring system.

Unpatentability: The Board did not err in finding a motivation for skilled artisans to combine references so as to reach the claimed invention. Bosch’s argument that the patent was so different from the prior art as to make them noncombinable was unpersuasive. And the Board did not err in rejecting Bosch’s declaration on commercial success as lacking in evidentiary foundation, particularly as to the declarant’s statement that a variety of Bosch products were covered by the patent at issue. The Board also did not err in rejecting claim charts based on documentation that was not made part of the record. Bosch’s evidence of licensing did not demonstrate that the licenses were in recognition of the invention’s merits. And its evidence of industry praise was insufficiently tied to the invention. Substantial evidence supported the unpatentability determination.

Contingent motion to amend: The Board erred by assigning to Bosch the burden of proving that its substitute claims were not indefinite, and were otherwise patentable, as discussed in Aqua Products, 872 F.3d 1290 (Fed. Cir. 2017). The opinion expressly does not reach the question of whether the Board has statutory authority to reject proposed amended claims on definiteness grounds in an IPR. Op. at 21 n.6.

KEYWORDS: INTER PARTES REVIEW; OBJECTIVE INDICIA; CONTINGENT MOTION TO AMEND