In re Aqua Products

In re Aqua Products (Fed. Cir. 2016)

In a short opinion, the Federal Circuit has reaffirmed the USPTO’s tightly restrictive approach to amendment practice in Inter Partes Review (IPR) proceedings.  Under the rules, a patentee has one opportunity to propose amendments or substitute claims. However, the motion to amend will only be granted if the patentee also demonstrates in the motion that the proposed amendments would make the claims patentable over the known prior art. See Idle Free Sys., Inc. v. Bergstrom, Inc., IPR2012–00027, 2013 WL 5947697 (PTAB June 11, 2013).

That approach has been upheld in several Federal Circuit cases, including Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1307−08 (Fed. Cir. 2015).  As such, the panel here held that its power was restricted:

Given our precedent, this panel cannot revisit the question of whether the Board may require the patentee to demonstrate the patentability of substitute claims over the art of record.

As such, the Federal Circuit found no abuse of discretion in thte PTAB’s denial of amendment.

We conclude that the Board did not abuse its discretion by denying Aqua’s motion to amend. The Board rebutted Aqua’s sole argument that the vector limitation made the substitute claims patentable over the combination of Henkin and Myers. Because Aqua’s arguments with respect to that combination rested exclusively on the vector limitation, the Board had no obligation to address the other amendments or to consider the issue of objective indicia of non-obviousness, which Aqua did not raise in connection with the Henkin/Myers combination. We affirm.

The case is being handled by Finnegan’s top appellate lawyer James Barney and is now set-up for en banc review.


45 thoughts on “In re Aqua Products

  1. 4

    And the game goes on. I can’t in good faith tell a client to file a patent, which if issued may subject him or her to hundreds of thousands of dollars in a re-examination proceeding initiated by an anonymous entity for a few grand. We have a very broken system.

    1. 4.1

      Richard Peterson, indeed we have. And we should begin to name names, the people behind reexaminations and IPRs and the organizations that backed them. They are designed to impose great expense on the patent owners, exhaust him with serial reexaminations and IPRs, reduce the standard of proof from clear and convincing to preponderance, use broadest reasonable interpretation, and otherwise give a big middle finger to the patent owner who might actually want to enforce his patent.

      And now with IPRs, the meretricious interloper can file an IPR simply for the purposes of obtaining cash for settlement, or deflating a company’s stock price so that the petitioner can short the stock and make a profit. The opportunity for abuse has been magnified 1000 times. And yet, these organizations that backed reexaminations and IPRs continue to back them.

      It is about time for most patent attorneys and companies who support the patent system to pull the plug on the AIPLA and on the IPO.

      1. 4.1.1

        name names…?

        Let’s name “Ned Heller” for one.

        With his “cohorts” that seek to deny eligibility for valid inventions (along the lines of software and business methods), and the propagation of an agenda that includes the ascendancy of the judicial branch over the legislative branch to achieve their desired ends, and couple that with the mindless acceptance of HARMonization (for harmonization’s sake).

    2. 4.2

      I can’t in good faith tell a client to file a patent, which if issued may subject him or her to hundreds of thousands of dollars in a re-examination proceeding initiated by an anonymous entity for a few grand.

      Patent applications are being filed like gangbusters so I wonder what all those other attorneys are thinking.

      Probably at least some of them recognize that there’s plenty of valuable and eminently defensible claims to be obtained.

      Re-examinations aren’t new, by the way.

    3. 4.3


      Informing clients of the change in risk is definitely a requirement under our ethical duties.

      But I think you jump too quickly from that different risk to a notion of “don’t file.”***

      You may be “in the twilight,” but you are still in the game, so I suggest that you do not look at the battles here as “mere bickering.” The underlying LAW over which the bickering is concerned with – and the inte11ectually honest, critical thinking to which that law is being applied (or misapplied) is very much STILL (or should be) a concern of yours.

      I will add that whether or not you advise clients as to obtaining business method patents is certainly an aspect of your choice of deciding the terms of representation – but that is just not the same as any type of advising clients that business method patents are against the law, and should be avoided on that basis. Much like the ge ner al view of “***” noted above, critical thinking and informing clients of the law as it actually is, AND the current risks under the law with how the law is being applied and misapplied is not the same as advising clients to simply forgo something that they have a right to. You do not have to be the one drafting and prosecuting any type of business method patent, but you are not living up to your ethics if you are advocating against business method patents based on a philosophical view of what the law should be. Of course, this is one of the very real disservices of this blog (America’s leading source of patent law) when the blog creates the appearance that the law is something other than what it is with the rampant allowance of internet style shout down, drive by monologuing of the sAme “arguments” made by the sAme people over and over and over again that simply do not even attempt to treat the counter pints raised in any sort of inte11ectually honest manner.

  2. 3

    The PTO should have done something like this: ask the petitioner if it would argue against patentability of the proposed claims, and if not, they should simply be allowed.

    1. 3.1

      ask the petitioner if it would argue against patentability of the proposed claims, and if not, they should simply be allowed.

      Because … why?

      If the patentee whose claims have just been tanked can’t make a convincing argument that its specification provides written description for a non-obvious claim, then the right thing to do for everyone is pull the plug on the patnet. Buh-bye, good riddance, etc.

      It isn’t that difficult to make that kind of argument, you know. People do it all the time.

      It’s a bit of a trick, of course, to make that kind of argument and still end up with an amended claim that you can use to haul fifty companies into East Texas. I mean, not everyone remembered to include support for a claim limitation stating that their device is “mountable”. That’s astronaut-quality scrivening.

      1. 3.1.1

        MM, the claims have to be narrower or they are invalid. They have to be supported or they are invalid. They have to define over the prior art or they are invalid. But, if the petition is not complaining, why not just issue them?

        I can conceive of not good reason not to. This applies even if the broader claims which are the subject of the IPR are held invalid.


          Ned, the PTO has has an obligation not to issue invalid patent claims. It does not allow claims just because it is OK with two private parties to do so. That is one reason why in so many interferences [likewise inter partes Board PTO proceedings] neither party ends up with the interfering claims.

      2. 3.1.2

        So, is the term “handle,” structural or functional. We do have to deal with the English language.


          is the term “handle,” structural or functional

          The answer doesn’t really matter much since adding “and a handle” to an otherwise unpatentable (e.g., anticipated) apparatus claim isn’t going to make that claim patentable.

          Likewise, it’s absurd that the characteristic of being “mountable” — the characteristic recited in Aqua’s claims — was somehow enough to re-patent an old “digital display.”


            Anticipation plus a new item “won’t make something” patentable….?

            Do you mean “won’t make it eligible?”

            Preciseness on this point is rather important.

            After all, this here is even one of those “objective structural claim” optional format things that you are always whining about…


              Anticipation plus a new item “won’t make something” patentable….?

              Beat that strawman, “anon”! Whoopeee! Super impressive.

              It’s Friday and apparently you have nothing better to do except take specific and narrow statements out of context and pretend that some broad proposition was set forth. How fun it must be for you! When you’re finished, be sure to put your crayons back in the box and get ready for nappie time.


                It’s your strawman and you are the one “beating” it.

                I am just pointing out what you are doing.

                I took NOTHING out of context by asking you to be more explicit in your writing.

    2. 3.2


      I’d also allow more flexibility if the patentee doesn’t have a pending application to work with.

      1. 3.2.1

        The common practice of having a pending application when in a contest has been a righteous practice for those who can afford it, but what of the small time, big idea inventor? Worthy inventions must somehow be encouraged, but now form over substance is king. We’re killing the American Dream.


          but what of the small time, big idea inventor?

          Good question – and that is why I always tell people to employ some critical thinking when the usual answer of “make it more expensive” is offered for any supposed patent “problem.”

          Of course, those entrenched powers who do not like the disruptive innovation effect that the patent system provides are only too happy to make things more expensive- to employ the “game of kings” tactics.

          Some of us have pointed this out with references to innovation experts, while others have simply attempted to denigrate the path of disruptive innovation (sometimes overtly, sometimes subtly, as in wanting some evident linear “improvement” when disruptive innovation is OFTEN at first the opposite of what many consider “improvement.”)

          Yes, you likely view this as “merely bickering,” but in your twilight, I would ask that you not be so jaded as to think that your twilight should govern the debate on promoting innovation by protecting such disruptive innovation. You may be tempted to desire the “pleasantness” and “orderliness” of a grid of streets, but the patent system was meant for a parking lot approach.

          Take your evident concern for the “”but what of the small time, big idea inventor?” and remember that what you may deem as “bickering” is rooted in protecting – at a critical level – the system that champions the efforts of that selfsame “small time, big idea inventor.”

  3. 2

    “set up for en banc review”….thanks for that, I spit my coffee on the computer screen.

  4. 1

    Asking a question that begs the answer of “Yep, that is what the statute says” is not a great question.

    Those looking at the power provided to the Office over the sole discretion of the initiation decision should take note.

    1. 1.1

      And what does the statute say? That it is the petitioner’s job to prove a proposition of unpatentability, no? The AIA says nothing about reversing the burden of proof for substitute claims. It also doesn’t say that substitute claims should almost always be denied.

      1. 1.1.1

        The AIA says nothing about reversing the burden of proof for substitute claims. It also doesn’t say that substitute claims should almost always be denied.

        It also doesn’t say that patents in IPR proceedings with plainly invalid claims are likely to include support for valid claims.

        Can you guess why it doesn’t say that? The answer is that the “most valuable” claims in a granted patent are usually the independent claims because they are the broadest. When those claims are tanked, the odds of finding equally valuable (i.e., infringed) non-obvious subject matter with written description support are pretty much nil.

        This should not come as a surprise to anyone.


          MM, exactly that is what I (in Europe) find surprising. Take oppositions at the EPO. One third of opposed patents get revoked, one third maintained as granted, and one third maintained in amended (ie narrowed) form. Now, if so many patents at the EPO survive post-issue inter partes review in narrowed form, why so few (and why the reluctance to admit amended narrowed claims) at the USPTO?


            As I pointed out MaxDrei, the “issue” of amendments (and applying BRI or a “different” post grant standard) is minimized as “not different” UNTIL it is suggested that if in fact not different, then just have the amendments and post-grant style of claim construction – and the person you are asking a question of is the very first to protest such a change.

            Now why do you think that type of double standard of “no change/too much change” exists?

            Hint: those who have this double standard are anti-patent.


            f so many patents at the EPO survive post-issue inter partes review in narrowed form, why so few … at the USPTO?

            There could be all kinds of explanations for that but the most obvious explanation is that the patents being subjected to US IPR are junkier than the patents being subjected to IPR at the EPO.


              LOL – you have any semblance of anything even remotely resembling proof for that?

              (you do know that ALL of the largest filers at the USPTO are Big Corp filers who ALSO file over at the EPO, right?)


            Max, in Europe, narrowing of claims does not create intervening rights. It does in the US. That is why patent owners fight tooth and nail for the claims as is.


              Good point Ned but for me that raises as many questions as it answers. Europeans put much thought into the drafting of dependent claims, to provide a multitude of powerful narrower fall back positions, after issue. Why don’t Americans do that too, when the incentive they have, to get the claims in good shape, is even higher, and when their independent claims are so often unfeasibly untenably unsustainably wide?


                Not sure why you would presume that practice in the US is otherwise, or why this deflection is pertinent to the discussion, MaxDrei.


          I’m not the smartest pencil in the box, but if the USPTO grants a patent, why should not the clear and convincing evidence standard not apply to re-examination proceedings?

          Are we giving the USPTO an undeserved second bite of the apple? And, for political reasons?


            I meant “sharpest,” but you get my drift. How do we determine a worthy invention without bankrupting the inventor?


              Who decides, ultimately, whether an invention is worthy? The CAFC. So the CAFC has a duty to lay down a corpus of caselaw so clear that we all know what its answer would be in our case, without having to ask the CAFC. In that duty, it’s palpably failing.


                Max, I am glad you understand the problem and its source. The CCPA and the Federal Circuit have systematically undermined the PTO’s efforts to combat indefiniteness and functional claiming over the years, and virtually ignored the problem in appeals from district courts until Nautilus.

                Only Judge Dyk has called for a review of the problem of functional claiming. The court might start by reconsidering Donaldson.

                But we also need to repeal 112(f).


                Once again, blaming the CAFC without recognizing the role of the Supremes in making the mess (MaxDrei) , compounded by Ned wanting the court to write a different law than what Congress wrote (Dyk is one of the worst).


            Richard, the C&C standard should apply to issued claims. That means that reasonable doubts should be resolved in the favor of validity.

            But the larger picture is the whole issue of the patent office re-examining patents in the first place while patent term is wasting. We know that so long as the patent is back in the patent office that the patent is practically unenforceable. Reexaminations at the examiner stage take forever. Appeals take forever. Appeals to the Federal Circuit take forever. And none of this time and expense benefits the patent owner because anybody else can bring a reexamination on slightly different prior art, and the beleaguered patent owner must go through the whole process again.

            The system was designed for abuse and is abused routinely. Anybody who backs reexaminations or IPRs is not a friend of the patent system or of patent owners. There is a different word for these people. But the fact that the AIPLA and the IPO is behind both reexaminations and IPRs tells you something about those organizations.


              The “[a]nybody who backs reexaminations or IPRs is not a friend of the patent system or of patent owners” comment is too simplistic. We can all admit that the IPR and re-exam processes have players that abuse the system, but there is quite a bit of good being done to reign in bad patents that should not have existed in the first place.

              We can also all admit that the ex parte prosecution process is capable of being abused and has players that do abuse the system. Consider whether you have been performing clearance work for a client and were surprised at the scope of claims that were allowed over the prior art without amendment?

              To the comment about the process being harder for the smaller inventor, I do agree that the process is harder and that is unfortunate and should be addressed. But in my opinion, the patent bar should share that blame for its part in sitting idly by and watching the PTO allow overly broad claims under the guise of zealous advocacy. Same can be said for the folks at the PTO who know they should not be allowing these overly broad claims but are looking the other way either because they are count driven or short timers and just don’t care.



                There is NO value in your quip of “should not have existed n the first place” because that quip presupposes that you “know” the law and how to apply the law to make any such determination.

                Clearly you are not an attorney and misspeak as to “guise of zealous advocacy.” You play a nice “game” of share the blame, sound out some nice “Ends” and completely miss on providing means to those ends (or noticing that the problem under discussion is an improper means to any ends. ANY sense of “but there is good being done” has a very serious problem with legal ethics when they masquerade an “Ends justifies the means” mindset as appears in place with your comments.

                I cannot speak to the examiner side – except as I have consistently done (“do your Fn job” and “rubber stamping of EITHER Reject Reject Reject OR Accept Accept Accept is wrong“). Examination is not necessarily an easy job to have, but “Quality does not equal Reject,” and you get what you measure and all of that.


                rob, others might say this too, but the end does not justify the means.

                Further, since Alice and Octane Fitness, bad patents are being tanked at the court doorstep. The opportunity for abuse of process by owners of iffy patents is vanishing if not gone.

                Congress was told that reexaminations would strengthen the ability of patent owners to enforce their patents. That was a lie. Congress was told that IPRs would simply lower litigations costs. But since they can only be invoked by someone other than the patent owner, we have yet another lie.

                The AIPLA and the IPO created reexaminations, and continue to back them. The IPO claims to represent patent owners, but they really represent infringers. Both claim they oppose bad patents, but do nothing to get rid of functional claiming, business method patents or the like. Instead, these same folk bustle about trying to erase 101 from the law. That could only make matter 1000 times worse. At the same time, they rail against the Supreme Court, the only check on total chaos that their policy objectives have and would cause.

                We need to stop post-grant (or pre-grant for that matter)proceedings whose primary purpose is to oppress the patent owner. If the patent owner has a patent whose claims are invalid, they have the remedy of a reissue.

                At the same time, we need to attack functional claiming, mainly by repealing 112(f) that allows them. Regarding “abstract,” I think the courts are trending in the right direction now — since Enfish. I still think Versata was wrongly decided.

                And another step in the right direction might be to repeal the AIA in favor of a replacement is a whole lot simpler and that achieves harmonization.

                1. Ned, your windmill chase 0bsess10n is showing again.

                  While you spout “ends do not justify the means” (gee, I wonder where you get that from, perhaps you read that somewhere… 😉 ), you turn right around and want to use the same “ends justify the means” to get what you want the law to be instead of what the law IS in regards to “functional claiming,” the mess that the Supreme Court itself has made of 101, and business method patents.

                  And once again with your desire to repeal the AIA – do your job well enough with your opportunity of shooting a torpedo below the waterline of the good ship USS AIA Titanic and its all-or-nothing no-bulkhead design in which Congress considered and expressly rejected the possibility of separability, and you will not have to worry about repeal.


              Ned – once again you edge up to a question of mine for you that you refuse to answer.

              You state “the C&C standard should apply to issued claims.” Yet, you refuse to acknowledge the work of Congress in the AIA that changes that – AND the critical point in time (the action by a non-Article III judge, in the sole discretion of an executive branch officer (political appointee) with NO chance of review of that institution decision.

              You want something (C&C) that is naturally a stick in the bundle of property rights of a granted patent, yet clench tight your eyes to how that particular stick disappears, when it disappears, and just who makes it disappear (at the writings of the branch of the government authorized to write statutory law).

              The question is NOT whether you still have that particular stick after the initiation point (you do not).

              The question is not even can the executive office political agent can take that stick or take it without review (they can – PER CONGRESS).

              The question is whether Congress can write a law that violates other constitutional protections concerning property.



            Hey, I am not disagreeing with what your idea is, I am merely pointing out that Congress decided something else.

            Those who want to play the “blame the wrong people game” and blame the Office for this one (or the Federal Circuit for asking that court the wrong question) continue to miss the opportunity to ask the right question.


              Do you guys have a day job? Stop the petty bickering and lay out the facts and law as you often do. It is helpful, but the reality is that patent practice has dramatically changed. When you leave it up to the legislative branch, too often you leave it up to politicians who don’t understand the situation and are reacting to the demands of those having political influence.

              I’m in the twilight of my career, so I really don’t have an ax to grind. Just sayin’, perhaps if it were not an all or nothing contest, reasonable licensing might resolve a lot of disputes. Certain companies (such as Apple) are loathe to accept any submission from the outside.

              It is a joke that design patents are king. Let’s see how SCOTUS rules on damages for design patents. Pro rata for the contribution? Maybe that’s an answer for utility patents as well.


                Richard, Do you guys have a day job? Of course. And, my ability to do is made possible in large measure because I do not read the posts of anon.

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