from the United States Patent and Trademark Office, Patent
Trial and Appeal Board in No. IPR2013-00159.
R. BARNEY, Finnegan, Henderson, Farabow, Garrett & Dunner,
LLP, Washington, DC, argued for appellant. Also represented
by TIMOTHY P. MCANULTY, DAVID MROZ; ANTHONY A. COPPOLA,
ANTHONY J. DIFILIPPI, JEFFREY A. SCHWAB, Abelman Frayne &
Schwab, New York, NY.
HOPE SCHOENFELD, Office of the Solicitor, United States
Patent and Trademark Office, Alexandria, VA, argued for
intervenor Michelle K. Lee. Also represented by NATHAN K.
KELLEY, FARHEENA YASMEEN RASHEED, SCOTT WEIDENFELLER.
PROST, Chief Judge, REYNA, Circuit Judge, and STARK, Chief
U.S.P.Q.2d 1777] Reyna, Circuit Judge.
Products, Inc. (" Aqua" ) appeals from the final
written decision of the Patent Trial and Appeal Board ("
Board" ) in an inter partes review (" IPR" )
of U.S. Patent No. 8,273,183 (" '183 patent" ).
The Board denied Aqua's motion to substitute claims
22-24. Aqua challenges the Board's amendment procedures,
which require the patentee to demonstrate that the amended
claims would be patentable over the art of record. We affirm.
'183 patent concerns automated swimming pool cleaners,
which are devices used to filter water and scrub pool
surfaces. Such cleaners typically propel themselves about a
swimming pool using motor-driven wheels, water jets, suction,
or some combination thereof. See '183 patent
col. 1 ll. 30-48. According to the '183 specification,
propelling a cleaner using motor-driven wheels enables the
cleaner to move in a controlled pattern, but the technique
can be expensive because it requires equipping the cleaner
with a drive motor and integrated circuitry. See id.
col. 2 ll. 47-56. Cleaners that use suction or water jets do
not require a drive motor, but they traditionally move in
erratic rather than controlled patterns. Id. col. 2
'183 patent discloses an automated swimming pool cleaner
that uses " an angled jet drive propulsion system"
to move in a controlled pattern. Id. col. 1 ll. 1-4,
col. 3 ll. 15-20. Rather than using a motor to drive wheels,
the disclosed cleaner shoots filtered water backwards at an
angle to create both a forward force that propels the cleaner
and a normal force that keeps the cleaner's wheels in
contact with the pool floor. Id. col. 4 ll. 13-25,
46-49. As shown in Figure 9, the cleaner draws [118
U.S.P.Q.2d 1778] pool water through a bottom opening, filters
the water, and shoots the filtered water backwards from elbow
120R or 120L at an angle a so as to create the forward and
normal forces. Id. col. 4 ll. 46-51, col. 10 ll.
Patent, Figure 9.
Pool Systems (" Zodiac" ) petitioned the Board for
IPR of claims 1-14, 16, and 19-21 of the '183 patent.
Among the references Zodiac cited were U.S. Patent Nos.
3,936,899 (" Henkin" ) and 3,321,787 ("
Myers" ). Henkin discloses a pool cleaner that moves
randomly, in part by shooting a water jet from an adjustable
nozzle that can be angled " to yield both a downward
thrust component (i.e., normal to the vessel surface) for
providing traction and a forward component which aides in
propelling the car." Henkin at col. 5 ll. 19-22. Unlike
the cleaner of the '183 patent, Henkin's cleaner uses
three wheels rather than four and moves along a "
random" rather than controlled path. Id. at
Abstract. Henkin's jet is also powered by an external
rather than an internal pump, and it shoots unfiltered rather
than filtered water. Id. col. 5 ll. 15-19. Myers
discloses a prior art cleaner that uses an internal pump to
create a filtered water jet for erratic movement. Myers at
col. 1 ll. 63-65 (" electric motor" ), col. 2 ll.
22-33 (describing an internal filter), col. 3 ll. 6-12
(" water exiting from the unit and into the pool will
provide a jet force to move the unit" ).
Board instituted trial on all the challenged claims except
claims 10-12. Aqua moved to substitute new claims 22-24,
which amended claims 1, 8, and 20 to additionally require
that (1) the jet creates a downward vector force rear of the
front wheels (the " vector limitation" ), and (2)
the wheels control the directional movement of the cleaner
(the " directional movement limitation" ).
Substitute claim 23 also added that the cleaner has four
wheels (the " four wheel limitation" ), and