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In Mighton Products Limited v. Vision Industries Group, No. 18-1034 (August 7, 2018), the Federal Circuit affirmed the Patent Trial and Appeal Board’s final decision concluding that all 50 claims of US Patent No. 8,881,461 were unpatentable, and denying the patent owner’s contingent motion to amend.

For the most part, the appeal presented straightforward issues, and the Court affirmed the PTAB’s complete invalidation of the ‘461 Patent without separate opinion. One issue, however, lacked the straightforwardness of a clear precedent. The patent owner asked the court to remand on the contingent motion to amend because the Board decided the issue before the Federal Circuit announced its en banc decision in Aqua Products, Inc. v. Matal, 872 F.3d 1290 (Fed. Cir. 2017). Patent owner cited the Court’s decision in Bosch Automotive Service Solutions, LLC v. Matal, in which the Court remanded a similar motion so the Board could consider it under the standard announced in Aqua Products.

From an initial look, the Bosch Automotive decision appears dispositive on the issue. However, we persuaded the Court that a remand was unnecessary in our case because the Board’s findings and conclusions met the standard in Aqua Products.

Understanding that Aqua Products would be decided after our IPR, we alerted the Board to the possible change in the burden of proof, and, in opposition to the motion, we provided the Board with our proofs on unpatentability. Thus, in its decision, the Board ruled that the patent owner failed to meet its burden of proof on the patentability of the proposed substitute claims because the petitioner established by persuasive evidence that the claims would be unpatentable. This provided us the record to argue on appeal that a remand was unnecessary as the Board’s decision complied with the standard announced in Aqua Products. The Court affirmed the Board in total.

As this case clearly demonstrates, there is no replacement for over 20 years of patent litigation experience when preparing IPRs.  Foreseeing the potential change in law and submitting evidence under both standards allowed for an unassailable victory that did not require the additional delay and cost of a remand. Although IPRs and PGRs are limited proceedings, we have found plenty of opportunity for creativity and the application of our experience in Federal Court patent litigation.

At McGeary Cukor LLC, we represent clients in a variety of intellectual property (IP) practice areas, including patent-specific services and IP litigation. Our experienced patent and trial attorneys bring a wealth of big firm experience to address your IP needs, while maintaining the personalized attention, responsiveness and agility of a private firm.