BOSCH AUTOMOTIVE SERVICE SOLUTIONS, LLC v. MATAL

Before NEWMAN, CHEN, and HUGHES.  Appeal from the Patent Trial and Appeal Board.

Summary: In inter partes review, the patent challenger bears the burden of proving that proposed amended claims are unpatentable.  This burden applies equally to indefiniteness challenges.

The Board instituted an inter partes review of Bosch’s patent on the grounds of anticipation and obviousness.  Bosch argued the claims were not obvious over the prior art of record, and simultaneously filed a Contingent Motion to Amend with proposed amended claims to be added if the Board found the challenged claims unpatentable.  The Board found all challenged claims unpatentable as anticipated or obvious and denied Bosch’s Contingent Motion to Amend.  In denying the motion, the Board found that some of the proposed amended claims were indefinite, and that Bosch had failed to demonstrate that the proposed amended claims were patentable over the prior art of record.  The Board cited its own 2013 decision where it allocated the burden of proof of patentability to the patent owner in motions to amend claims during inter partes review.

The Federal Circuit vacated the Board’s denial of Bosch’s motion, finding that the Board had impermissibly shifted the burden of proof to Bosch.  The court applied its recent holding in Aqua Products that “the patent owner does not bear the burden of proof on the patentability of its proposed amended claims.”  Instead, the petitioner must prove the unpatentability of proposed amended claims by a preponderance of the evidence.  In its final judgment, the Board must justify its findings of unpatentability based on the evidence of record.  The court added that the “burden of proof allocation applies for questions of indefiniteness, as with other questions of unpatentability.”  Because the Board’s written decision expressly stated that Bosch had failed to carry a burden of proof with regard to both indefiniteness and obviousness of the proposed amended claims, the Federal Circuit found that the Board had impermissibly shifted this burden to the patent owner, and remanded for further consideration consistent with the Aqua Products decision.

This case is: BOSCH AUTOMOTIVE SERVICE SOLUTIONS, LLC v. MATAL