United States Court of Appeals 

for the Federal Circuit ______________________ 

IN RE: AQUA PRODUCTS, INC.,

Appellant

______________________ 

2015-1177

______________________ 

Appeal from the United States Patent and Trademark 

Office, Patent Trial and Appeal Board in No. IPR2013-

00159.

______________________ 

Decided: May 25, 2016 

______________________ 

 JAMES 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.

 MEREDITH 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. 

______________________ 
2 IN RE: AQUA PRODUCTS, INC. 

Before PROST, Chief Judge, REYNA, Circuit Judge, and 

STARK, Chief District Judge1.

REYNA, Circuit Judge. 

Aqua 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. 

BACKGROUND

A. Patented Technology

The ’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 ll. 57–

61.

The ’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, 

1 The Honorable Leonard P. Stark, Chief District 

Judge, United States District Court for the District of 

Delaware, sitting by designation.

 
IN RE: AQUA PRODUCTS, INC. 3

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 

pool water through a bottom opening, filters the water, 

and shoots the filtered water backwards from elbow 120R 

or 120L at an angle α so as to create the forward and 

normal forces. Id. col. 4 ll. 46–51, col. 10 ll. 47–51. 

’183 Patent, Figure 9.

B. Board Proceedings

Zodiac 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. 
4 IN RE: AQUA PRODUCTS, INC. 

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”). 

The 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 

substitute claim 24 added that the jet shoots filtered 

water (the “filtered water limitation”).

In its motion to amend, Aqua argued that the combination of Henkin and Myers does not render the substitute claims obvious because it does not suggest the vector 

limitation. J.A. 2289–91. Although Aqua referenced the 

other added limitations, it did not argue that those other 

limitations would have been non-obvious in light of Henkin and Myers. Regarding objective indicia, Aqua characterized its commercial embodiments as “successful” and it 

implied that Zodiac may have copied the design, but Aqua 

did not argue that these objective indicia were tied to the 

vector limitation or that they otherwise demonstrated 

that the vector limitation was non-obvious. J.A. 2288.

The Board denied Aqua’s motion to amend. It reasoned that the vector limitation would have been obvious 

because Henkin teaches positioning the jet at an angle 

that satisfies the vector limitation. J.A. 50–52. Regarding the other new limitations, the Board concluded without analysis or evidence that the limitations were within 

the ordinary skill. Id. In a footnote, the Board also held
IN RE: AQUA PRODUCTS, INC. 5

without analysis that Aqua’s arguments regarding objective indicia of non-obviousness were unpersuasive. Id.

Aqua appeals the Board’s denial of its motion to 

amend. Aqua argues that Board regulations requiring 

the patentee to demonstrate that an amended claim is 

patentable over the art of record are unsupported by 

statute, and that the Board’s interpretation of those

regulations impermissibly places the burden on the 

patentee to show non-obviousness. Moreover, Aqua 

argues that the Board abused its discretion by denying 

the motion to amend without considering all the new 

limitations and the objective indicia of non-obviousness, 

as would be required for invalidating an original claim.

DISCUSSION

We review the Board’s decisions using the standard 

set forth in the Administrative Procedure Act (APA), 5 

U.S.C. § 706. Dickinson v. Zurko, 527 U.S. 150, 154 

(1999). Under that statute, we set aside actions that are 

arbitrary, capricious, an abuse of discretion, or otherwise 

not in accordance with law. In re Sullivan, 362 F.3d 1324, 

1326 (Fed. Cir. 2004). “We accept the Board’s interpretation of Patent and Trademark Office regulations unless 

that interpretation is plainly erroneous or inconsistent 

with the regulation.” Id. (internal citations omitted). 

The America Invents Act (“AIA”) provides that a patent holder in an IPR “may file 1 motion to amend,” by 

“propos[ing] a reasonable number of substitute claims.” 

35 U.S.C. § 316(d)(1). The only statutory requirement is 

that the amendment “may not enlarge the scope of the 

claims of the patent or introduce new matter.” Id.

§ 316(d)(3). Section 318(b), however, provides that the 

final written decision may incorporate into the patent any 

new or amended claim “determined to be patentable.”

Pursuant to the statutory framework, the Patent and 

Trademark Office (“PTO”) promulgated 37 C.F.R. § 
6 IN RE: AQUA PRODUCTS, INC. 

42.121, which allows the Board to deny a motion to amend 

if the amendment expands the claim scope or “does not 

respond to a ground of unpatentability involved in the 

trial.” Because PTO regulations place the burden for any 

motion on the movant, see 37 C.F.R. § 42.20(c), the Board

has interpreted § 42.121 as placing the burden on the 

patentee to show 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). 

Our precedent has upheld the Board’s approach of allocating to the patentee the burden of showing that its 

proposed amendments would overcome the art of record. 

In Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292, 

1307−08 (Fed. Cir. 2015), we upheld the Board’s interpretation of its regulations, requiring the patentee to establish that proposed amendments would overcome the art of 

record. See also Prolitec, Inc. v. ScentAir Techs., Inc., 807 

F.3d 1353, 1363 (Fed. Cir. 2015). In Nike, Inc. v. Adidas 

AG, 812 F.3d 1326, 1333−34 (Fed. Cir. 2016), we further 

held that the Board’s regulations concerning motions to 

amend and its interpretation thereof are consistent with 

the AIA’s statutory framework, even though the framework generally places the burden of proving unpatentability on the IPR petitioner. 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. 

The only issue left open for our consideration is 

whether the Board abused its discretion by failing to 

evaluate objective indicia of non-obviousness and various 

new limitations in the proposed claims, even though Aqua 

did not argue that those indicia and limitations distinguish the proposed claims over the combination of Henkin 

and Myers. We find no abuse of discretion. The burden of 

showing that the substitute claims were patentable rested

with Aqua. It therefore follows that the Board’s evalua-
IN RE: AQUA PRODUCTS, INC. 7

tion of Aqua’s motion to amend was limited to considering

only those arguments that Aqua actually raised. To hold 

otherwise would require the Board to fully reexamine the 

proposed claims in the first instance, effectively shifting 

the burden from the patentee to the Board. Denial of a 

motion to amend in compliance with the APA only requires that the Board show that it fully considered the 

particular arguments raised by the patentee and that it

provided a reasoned explanation for why those arguments 

were unpersuasive. Those requirements were satisfied 

here. 

Aqua contends that the Board was “on notice” of its 

arguments with respect to all four added limitations. 

Appellant’s Reply Br. 5–12. In fact, in its motion, Aqua 

presented only one reason why the substitute claims 

might overcome the combination of Henkin and Myers. 

That reason was that the combination fails to teach the 

newly added vector limitation. To deny the motion, the 

Board needed to rebut only this argument. 

To be sure, Aqua makes passing references in its motion to the additional limitations. Although Aqua identifies in the record where it described the new limitations 

and distinguished them from the prior art, none of the 

descriptions were made in the context of supporting the 

patentability of the amended claims in light of the combination of Henkin and Myers. Most of the arguments were 

made in the course of the main IPR proceedings; none of 

the arguments appeared in the portion of the motion to 

amend that sought to explain why the “Substitute Claims 

Are Not Obvious In View of Henkin and Myers.” Accordingly, the Board was under no obligation to consider them 

in evaluating the motion to amend.2

2 Aqua excuses its failure to provide argument for 

its additional limitations by emphasizing the 15 page 

 
8 IN RE: AQUA PRODUCTS, INC. 

The Board properly rebutted Aqua’s argument. The 

Board explained that Henkin discloses the vector limitation by teaching a jet whose angle “is selected to yield 

both a downward thrust component (i.e., normal to the 

vessel surface) for providing traction and a forward component which aids in propelling the car.” J.A. 51 (citing

Henkin col. 5 ll. 19–22). The Board thus found that 

Henkin taught the vector limitation explicitly.

Aqua argues that the Board’s analysis is unsupported 

because the purpose of the angled jet in the prior art was 

to promote random movement rather than stability, as in 

the ’183 patent. That argument is unpersuasive because 

nothing about the vector limitation precludes random 

movement, and indeed, the ’183 specification teaches that 

the invention encompasses both controlled and random

movement. See ’183 patent col. 5 ll. 4–9. 

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. 

AFFIRMED

limit under which it operated. The problem here is that 

Aqua did not ask the Board for additional pages, or any 

similar relief. As such, we cannot say that the Board 

abused its discretion by holding Aqua to the thenapplicable page limits.

 
IN RE: AQUA PRODUCTS, INC. 9

COSTS

No costs.