The U.S. Court of Appeals for the Federal Circuit has affirmed the Patent Trial and Appeal Board’s rejection on inter partes review of 16 claims of a patent for a handheld universal tool for use with various remote tire pressure monitoring systems. The Board erred, however, in denying the patent owner’s request to substitute 16 amended claims for the original claims. The Board impermissibly assigned the burden of proof on patentability of the proposed amended claims to the patent owner. Therefore, the denial of the motion to amend was vacated, and the case was remanded for reevaluation of the substitute claims under Federal Circuit precedent requiring the party challenging validity to carry the burden of proof of establishing unpatentability—which, with respect to the substitute claims, was the Board (Bosch Automotive Service Solutions, LLC v. Matal, December 22, 2017, Chen, R.).
A full summary of this case has been published on Kluwer IP Law.