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Challenger Bears Burden of Proof for Unpatentability of Proposed Amended Claims

In an opinion addressing the burden of proof for unpatentability for a proposed amended claim in an inter partes review (IPR), the US Court of Appeals for the Federal Circuit concluded that the challenger bears the burden of proving the unpatentability of the challenged claim, including challenges based on 35 USC § 112. Bosch Auto. Serv. Solutions, LLC v. Matal, Case No. 15-1928 (Fed. Cir., Dec. 22, 2017) (Chen, J).

Autel petitioned for IPR of a Bosch patent directed to a hand-held tool for activating tire sensors and communicating with a vehicle’s tire sensor system. During the IPR, Bosch contingently moved to amend certain claims by inserting “means for recording” and “means for selecting” limitations, in the event the Patent Trial and Appeal Board (PTAB) found the original claims unpatentable.

In its final written decision, the PTAB found all challenged claims unpatentable and denied Bosch’s contingent motion to amend. The PTAB found the proposed claims indefinite under § 112, ¶ 2, because the specification failed to disclose sufficient structure corresponding to the claimed means for recording (as required by paragraph 6 of 35 USC § 112). Bosch appealed. After Bosch appealed, Autel informed the court it would not participate in the appeal.

Regarding the contingent motion to amend, Bosch argued that the PTAB impermissibly placed the burden on Bosch to establish the patentability of the proposed claims, and the Federal Circuit agreed. The panel explained that the party challenging patent validity on indefiniteness grounds carries the burden of proof. This applies to the patentability of proposed amended claims as well—the petitioner bears the burden of proving the proposed amended claims are unpatentable by a preponderance of the evidence. This burden applies to questions of indefiniteness, as with other questions of unpatentability. Hence, the panel vacated the PTAB’s denial of Bosch’s contingent motion to amend and remanded the case to the PTAB to evaluate the patentability of the proposed amended claims in view of Aqua Products v. Matal, where the Federal Circuit explained that even when a challenger ceases to participate in an IPR, the PTAB must justify any finding of unpatentability.   

© 2019 McDermott Will & Emery


About this Author

Joseph Speyer, Intellectual Property Attorney, McDermott Emery Will Law firm

Joseph Speyer, PhD, focuses on patent prosecution, including drafting and prosecuting patent applications related to electronics, chemistry, materials science, mechanical devices and telecommunications. He also provides freedom-to-operate opinions and litigates in district court and at the US International Trade Commission, where he has provided counsel regarding technologies such as telecommunications, electronics and mechanical devices.

Previously, Joseph was a law clerk at the US International Trade Commission, where he gained experience...