Bosch Automotive Service Solutions, LLC v. Matal

United States Court of Appeals
for the Federal Circuit
______________________
BOSCH AUTOMOTIVE SERVICE SOLUTIONS,
LLC,
Appellant
v.
JOSEPH MATAL, PERFORMING THE FUNCTIONS
AND DUTIES OF THE UNDER SECRETARY OF
COMMERCE FOR INTELLECTUAL PROPERTY
AND DIRECTOR, U.S. PATENT AND TRADEMARK
OFFICE,
Intervenor
______________________
2015-1928
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. IPR2014-
00183.
______________________
Decided: December 22, 2017
______________________
TIMOTHY M. MCCARTHY, Clark Hill, PLC, Chicago, IL,
argued for appellant. Also represented by DAVID J. MARR.
FRANCES LYNCH, Office of the Solicitor, United States
Patent and Trademark Office, Alexandria, VA, argued for
intervenor. Also represented by THOMAS W. KRAUSE,
ROBERT MCBRIDE, SCOTT WEIDENFELLER.
2 BOSCH AUTOMOTIVE SERVICE v. MATAL
______________________
Before NEWMAN, CHEN, and HUGHES, Circuit Judges.
CHEN, Circuit Judge.
This appeal arises from the inter partes review (IPR)
of U.S. Patent No. 6,904,796 (the ’796 patent) owned by
Bosch Automotive Service Solutions LLC (Bosch). The
Patent Trial and Appeal Board (Board) granted the IPR
petition filed by Autel U.S. Inc. and Autel Intelligent
Technology Co. Ltd. (Autel) and instituted the IPR on
claims 1, 4–15, and 20–22 of the ’796 patent. Bosch filed
a patent owner response and a “contingent” motion to
amend, seeking to substitute amended claims 23–38 for
original claims 1, 4–15, and 20–22 in the event that the
Board found the challenged claims unpatentable. In its
final decision, the Board found all challenged claims
unpatentable and also denied Bosch’s contingent motion
to amend. Autel U.S. Inc. v. Bosch Auto. Serv. Sols. LLC,
No. IPR2014-00183, 2015 WL 2149218 (P.T.A.B. May 5,
2015) (Final Written Decision). Bosch now appeals. 1 For
the reasons below, we affirm the Board’s finding of un-
patentability of claims 1, 4–15, and 20–22, and we vacate
and remand its denial of Bosch’s motion to amend as to
proposed substitute claims 23–38.
BACKGROUND
I. The ’796 Patent
The ’796 patent, titled “Remote Tire Monitoring Sys-
tem,” relates to a handheld tool for (i) activating remote
tire pressure monitoring system (RTMS) tire sensors and
1 After Bosch filed its opening brief, Autel informed
the court that it would not participate in the appeal. The
Director of the United States Patent and Trademark
Office intervened to defend the Board’s decision.
BOSCH AUTOMOTIVE SERVICE v. MATAL 3
(ii) communicating with a vehicle’s RTMS receiving unit.
See ’796 patent col. 1, ll. 6–8; col. 2, ll. 49–63. RTMS
sensors measure air pressure in each of a vehicle’s tires
and, when activated, communicate pressure and other
tire-specific information to a receiving unit in the vehicle
via radio frequency (RF) signals. Id. col. 1, ll. 16–23. The
RTMS receiving unit can then use that information to
alert the driver, via visual or audible alarm, of a specific
tire characteristic such as low tire pressure. Id. col. 1, ll.
25–32.
According to the ’796 patent, different manufacturers
in the RTMS field use different types of devices and/or
signals for activating RTMS tire sensors, including mag-
nets, valve core depressors, continuous wave signals, and
modulated signals. Id. col. 4, l. 33 – col. 6, l. 32. These
manufacturers also use different methods to transmit
data from the tire sensor to the receiving unit, including
RF signals at particular frequencies including 315 MHz,
433 MHz, and 916 MHz. Id. col. 2, ll. 38–48. The ’796
patent’s claimed activation tool is intended to work with
all of these known RTMS architectures; it incorporates,
into a single, handheld tool, all the known, different ways
to activate RTMS tire sensors as well as the different
ways known to communicate with a vehicle’s receiving
unit. Id. col. 2, ll. 49–63. The ’796 patent contends that
“[i]n this manner, a technician tasked to install a new tire
or to rotate tires can utilize a single tool to work with
remote tire monitoring systems made by different manu-
facturers.” Id. col. 2, ll. 60–63. When a technician moves
from working on one vehicle to another vehicle that has a
different RTMS activation system, the technician can
simply switch between different modes of operation using
a switch on the tool. Id. col 10, l. 66 – col. 11, l. 2.
The ’796 patent recites various apparatus claims
drawn to this universal activation tool and method claims
for using the tool. Claim 1 is representative of the
claimed apparatus:
4 BOSCH AUTOMOTIVE SERVICE v. MATAL
1. A tool comprising a plurality of means for acti-
vating remote tire monitoring system tire sensors,
the plurality of means selected from the group
consisting of a magnet, a valve core depressor,
means for generating continuous wave signals,
and means for generating modulated signals,
wherein the tool is capable of activating a plurali-
ty of tire sensors, each of the plurality of tire sen-
sors utilizing a different method for activating the
said tire sensor.
Id. col. 12, l. 64 – col. 13, l. 4. Method claim 20 is repre-
sentative of the functions the claimed tool performs, i.e.,
activating the sensor, receiving data from the tire sensor,
and transmitting the tire sensor data to the RTMS’s
receiving unit:
20. A method, comprising the steps of:
activating a remote tire monitoring system tire
sensor;
receiving a tire sensor signal containing data from
the activated tire sensor; and
transmitting some or all of the data received from
the tire sensor to a remote tire monitoring system
receiving unit, wherein the activating step, the re-
ceiving step, and the transmitting step are all per-
formed by a single tool, and wherein the tool
comprises a plurality of means for activating re-
mote tire monitoring system tire sensors.
Id. col. 16, ll. 1–10 (as amended by Certificate of Correc-
tion dated Oct. 11, 2005).
II. IPR Institution and Prior Art
On May 7, 2014, the Board instituted review of claims
1, 4–15, and 20–22 of the ’796 patent based on Autel’s
BOSCH AUTOMOTIVE SERVICE v. MATAL 5
petition alleging unpatentability on multiple obviousness
and anticipation grounds. 2 Those grounds included
claims 1 and 4–14 as likely obvious over the combination
of European Patent Publication No. 1 026 015 A2 (McClel-
land), U.S. Patent Application Publication No.
2003/0080862 (Kranz), U.S Patent No. 6,414,592 (Dixit),
and British Patent No. 2305074 (Howell). The Board also
instituted review of claim 15 as likely obvious in view of
the same combination of McClelland, Kranz, Dixit, and
Howell, plus two additional references. And it instituted
review of claims 20–22 as likely anticipated by and, in the
alternative, obvious over, McClelland alone.
A. McClelland
McClelland describes an RTMS for monitoring inter-
nal pressure of a vehicle’s tires and transmitting tire
pressure readings via RF transmission to a receiving unit
located in the vehicle. The McClelland RTMS is shown in
Figure 1, reproduced below:
2 Autel also sought review of, and the Board insti-
tuted on, claim 16. However, that claim was cancelled
during the IPR and is not at issue in this appeal.
6 BOSCH AUTOMOTIVE SERVICE v. MATAL
As shown in Figure 1, each tire (T) has its own tire
monitor 12 that transmits tire pressure signals to the
receiving unit 14. Receiving unit 14 provides a warning
to the operator of the vehicle when the indicated tire
pressure of any tire is outside a predetermined range.
McClelland activates each tire monitor 12 using a
signal from an exciter unit 16, comprised of a low fre-
quency transmitter circuit 20, high frequency receiver
unit 22, and memory 26. McClelland discloses using a
low frequency signal of approximately 125 kHz for acti-
vating the tire monitors and also states that “other fre-
quencies or ranges of frequencies may be suitable.” J.A.
626. According to McClelland, the exciter unit 16 may be
a handheld unit carried by a service technician and
brought near the tires for activation of each tire monitor,
BOSCH AUTOMOTIVE SERVICE v. MATAL 7
during assembly or servicing of the vehicle. In particular,
“[t]he operator may, for example, press a button or other-
wise activate the exciter [16] to energize the tire monitor
[12] and provide an activation signal.” J.A. 629. In
response to an activation signal, the tire monitor 12
transmits tire-specific information to the exciter unit 16.
The exciter unit 16 then communicates that information
to the receiving unit 14.
B. Kranz
Kranz similarly discloses a system referred to as a
reader for determining whether the tires on a vehicle
have low pressure. The Kranz reader transmits a modu-
lated frequency signal to activate and request pressure
information from RF tags co-located with the tires. The
RF tags process the request and transmit tire infor-
mation—including pressure and an RF tag ID correspond-
ing to a particular tire—back to the reader. Kranz
discloses that, in one embodiment, the reader is a
handheld unit with an integrated display.
C. Dixit
Dixit discloses a tire condition sensor unit 18 at each
tire to transmit sensed tire conditions (such as tempera-
ture and pressure) and tire location information to a
vehicle-based central unit. Dixit Figure 2, reproduced
below, shows a handheld transmitter tool 44 for com-
municating with RF receiver 46 associated with each tire
condition sensor unit 18.
8 BOSCH AUTOMOTIVE SERVICE v. MATAL
Dixit explains that the handheld transmitter com-
municates with each of the different tire condition sensor
units for a particular vehicle. Dixit also contemplates
that the handheld transmitter “communicate[s] with tire
condition sensor units within different tire condition
communication systems at different vehicles.” According
to Dixit, the handheld transmitter is designed to serve as
a “universal tool” that can communicate information to
various tire condition sensor units, regardless of sensor
type.
D. Howell
Howell seeks to address the problem caused by the
proliferation of different, incompatible radio frequency
identification (RFID) tags and transponders, like those
employed in RTMS systems. Howell explains that
“[c]urrently, there is no common carrier modulation and
data transmission system agreed between manufacturers
for such transponders and the systems chosen by different
manufacturers of tags and readers vary widely and are
generally incompatible with one another.” As a result, “a
reader made by one manufacturer for reading a particular
BOSCH AUTOMOTIVE SERVICE v. MATAL 9
type of tag or transponder will not normally be able to
read tags or transponders manufactured by another
supplier.” Given the absence of a single communication
standard, Howell teaches a handheld reader for determin-
ing “the modulation system and/or data transmission
system of a data storage device thereby allowing data
stored by different manufacturer’s data storage devices to
be read.” In other words, Howell teaches a handheld tool
designed to communicate with tags and transponders
from different manufacturers.
E. Claim Construction
In its Institution Decision, the Board construed cer-
tain “means-plus-function” limitations of the challenged
claims. Relevant to this appeal, the Board determined
that the structures disclosed in the specification corre-
sponding to the recited “means for activating remote tire
monitoring system tire sensors” (in independent claims 1,
7, 9, 13, and 15) are: a magnet, a valve core depressor,
and a frequency generating circuitry and microprocessor
for generating and transmitting continuous wave signals
and modulated signals. The Board also construed a
“plurality of means” for activating these tire sensors (in
independent claims 1, 7, 9, 11, 13, and 15) as two or more
means.
III. Patent Owner’s Response and
Contingent Motion to Amend
In Bosch’s Patent Owner Response, Bosch acknowl-
edged that the ’796 patent’s disclosed and claimed “means
for activating” tire sensors were all known in the prior
art, but it argued there was no motivation to combine
these different, known activation means into the claimed
universal tool. Bosch also argued that objective indicia—
including commercial success, licensing, and industry
praise—support the ’796 patent’s nonobviousness.
10 BOSCH AUTOMOTIVE SERVICE v. MATAL
Bosch simultaneously filed a Contingent Motion to
Amend, wherein it proposed to amend certain claims by
inserting “means for recording” and “means for selecting”
limitations, in the event the Board found the original
claims unpatentable. Proposed substitute claim 23,
intended to replace claim 1, is representative of the pro-
posed changes to the apparatus claims and is shown
below with the newly added language underlined:
23. A tool comprising:
a plurality of means for activating remote tire
monitoring system tire sensors, the plurality of
means selected from the group consisting of a
magnet, a valve core depressor, means for gener-
ating continuous wave signals, means for generat-
ing modulated signals, means for recording a most
recent means for activating signal that was uti-
lized to successfully activate a tire sensor, and
means for selecting the recorded means for acti-
vating as the first means for activating to be used,
wherein the tool is capable of activating a plurali-
ty of tire sensors, each of the plurality of tire sen-
sors utilizing a different method for activating the
said tire sensor.
J.A. 923. Proposed substitute claim 36, intended to
replace claim 20, is representative of the proposed chang-
es to the method claims:
36. A method, comprising the steps:
activating a first remote tire monitoring system
tire sensor using a one of a plurality of means for
activating remote tire monitoring system tire sen-
sors, the plurality of means selected from the
group consisting of a magnet, a valve core de-
pressor, means for generating continuous wave
signals, and means for generating modulated sig-
nals;
BOSCH AUTOMOTIVE SERVICE v. MATAL 11
receiving a tire sensor signal containing data from
the activated first tire sensor;
recording the one of the plurality of means for ac-
tivating; and
transmitting some or all of the data received from
the first tire sensor to a remote tire monitoring
system receiving unit, and
activating a second remote tire monitoring system
tire sensor using the recorded means for activat-
ing;
wherein the activating step, the receiving step,
the recording steps, and the transmitting step are
all performed by a single tool, and wherein the
tool comprises a plurality of means for activating
remote tire monitoring system tire sensors.
J.A. 929.
IV. Final Written Decision
In the Final Written Decision, the Board concluded
that all challenged claims were unpatentable and denied
Bosch’s contingent motion to amend.
As to claims 1 and 4–14, the Board held that it would
have been obvious to a person of ordinary skill in the art
to incorporate McClelland’s continuous wave activation
signal and Kranz’s modulated activation signal into a
single activation tool to minimize the number of tools that
a technician needs to use for collecting tire pressure data
from different vehicles that use different means for acti-
vating RTMS tire sensors. The Board pointed to the
universal tools taught by Dixit and Howell for motivation
to create a similar universal tool that would result from
combining McClelland and Kranz. The Board also held
that the additional disclosure of two-way communication
between the tool and receiving unit, found in claim 15,
was rendered obvious by McClelland, Kranz, Dixit, and
12 BOSCH AUTOMOTIVE SERVICE v. MATAL
Howell in combination with additional tertiary references.
Finally, the Board found method claims 20–22 both
anticipated and obvious in view of McClelland’s tool,
which can use multiple activation frequencies (e.g., 125
kHz, “other frequencies,” and other “ranges of frequen-
cies”) and, therefore, discloses a “plurality of means for
activating” sensors. The Board also found Bosch’s assert-
ed objective indicia to be both lacking a sound evidentiary
foundation and untethered from the claims of the ’796
patent.
The Board then denied Bosch’s contingent motion to
amend. First, the Board found that the proposed appa-
ratus claims were indefinite because the ’796 specification
fails to disclose sufficient structure corresponding to the
claimed “means for recording a most recent means for
activating signal that was utilized to successfully activate
a tire sensor.” Second, the Board found that Bosch failed
to carry its burden of proof that the proposed substitute
claims would have been patentable over the prior art.
Bosch filed a timely appeal of the Board’s decision.
We have jurisdiction under 28 U.S.C. § 1295(a)(4)(A).
DISCUSSION
We review the Board’s decisions under the standards
set forth in the Administrative Procedure Act (APA), 5
U.S.C. § 706. Pride Mobility Prods. Corp. v. Permobil,
Inc., 818 F.3d 1307, 1313 (Fed. Cir. 2016). We must set
aside the Board’s actions if they are “arbitrary, capricious,
an abuse of discretion, or otherwise not in accordance
with law” or “unsupported by substantial evidence.” 5
U.S.C. § 706(2). We review the Board’s legal conclusions
de novo and its factual findings for substantial evidence.
In re Gartside, 203 F.3d 1305, 1316 (Fed. Cir. 2000). A
finding of fact is supported by substantial evidence if a
reasonable mind might accept the evidence as adequate
support for the finding. Consol. Edison Co. v. NLRB, 305
U.S. 197, 229 (1938).
BOSCH AUTOMOTIVE SERVICE v. MATAL 13
I. Claims 1 and 4–15
Bosch first challenges the Board’s determination that
claims 1 and 4–15 are unpatentable as obvious. Bosch
argues the Board erred in (1) finding a motivation to
combine McClelland, Kranz, Howell, and Dixit; 3 and
(2) disregarding Bosch’s evidence of nonobviousness.
A claim is unpatentable if the differences between the
claimed subject matter and the prior art are such that the
subject matter as a whole would have been obvious at the
time the invention was made to a person having ordinary
skill in the art. 35 U.S.C. § 103; 4 KSR Int’l Co. v. Teleflex
Inc., 550 U.S. 398, 406 (2007). “Obviousness is a question
of law based on underlying findings of fact.” Merck & Cie
v. Gnosis S.P.A., 808 F.3d 829, 833 (Fed. Cir. 2015), cert.
3 For claim 15, Bosch argues only that “because
there exists no proper motivation for initially combining
McClelland, Kranz, Dixit, and Howell to support a finding
of obviousness [of claim 1], it is also improper to combine
these references with or without Pacsai ’467 and Gaborit
to find that claim 15 is obvious.” Bosch Opening Br. 47–
48. Bosch does not independently argue the patentability
of claim 15, and therefore, it stands or falls with claims 1
and 4–14. See In re Kaslow, 707 F.2d 1366, 1376 (Fed.
Cir. 1983) (“Since the claims are not separately argued,
they all stand or fall together.”).
4 Congress amended § 103 when it passed the
Leahy-Smith America Invents Act (AIA). Pub. L. No.
112–29, § 3(c), 125 Stat. 284, 287 (2011). Because the
application that led to the ’796 patent has never contained
a claim having an effective filing date on or after March
16, 2013 (the effective date of the statutory changes
enacted in 2011), or a reference under 35 U.S.C. §§ 120,
121, or 365(c) to any patent or application that ever
contained such a claim, the pre-AIA § 103 applies. Id.
§ 3(n)(1), 125 Stat. at 293.
14 BOSCH AUTOMOTIVE SERVICE v. MATAL
denied, 137 S. Ct. 297 (2016). The underlying findings of
fact include the scope and content of the prior art, the
differences between the prior art and the claimed inven-
tion, whether there is a motivation to combine prior art
references, the level of ordinary skill in the art, and
relevant objective indicia of nonobviousness. Id.A. Motivation to Combine
Bosch argues that those skilled in the art at the time
of invention lacked motivation to combine the various,
known activation means for activating tire sensors into
one handheld tool. We disagree.
As Bosch concedes, each of the claimed means of
RTMS sensor activation was known in the prior art. For
example, McClelland discloses a tool that activates RTMS
tire sensors using a continuous wave signal, and Kranz
discloses an activation tool using modulated signals.
Dixit and Howell both recognize that different manufac-
turers use sensors that are not compatible with a single
tool and both references disclose a single, handy tool
having the versatility to communicate with sensors by
different manufacturers. Based on these disclosures, the
Board reasonably found that an ordinarily skilled artisan
would have been motivated by the known compatibility
issues in the art of RTMS systems and the known solution
of a universal communication tool disclosed by both Dixit
and Howell to combine the different activation means of
McClelland and Kranz into a single universal tool. Sub-
stantial evidence supports this finding.
Bosch’s principal challenge to the Board’s motivation
to combine reasoning is that “the type of system and tool
of Dixit was so objectively very different from the device of
the ’796 patent, that there would be no contemporaneous
motivation nor design need to combine the teachings of
Dixit with the other cited references.” Bosch’s Opening
Br. 41. Bosch contends that because Dixit’s tool only
programs the various tire sensors with information and
BOSCH AUTOMOTIVE SERVICE v. MATAL 15
does not trigger the sensors to respond, Dixit’s disclosure
would be irrelevant to a person of skill in the art looking
to create a universal activation tool. Bosch’s characteriza-
tion of Dixit’s tool is not incorrect, but its argument is
unpersuasive.
Dixit, like McClelland and Kranz, relates to handheld
RTMS tools. Thus, it is from the same field of endeavor
as McClelland, Kranz, and the ʼ796 patent and is “rea-
sonably pertinent to the particular problem with which
the inventor is involved.” In re Bigio, 381 F.3d 1320, 1325
(Fed. Cir. 2004). That Dixit does not disclose a universal
RTMS activation tool (which would make Dixit an antici-
patory reference) or provide an express motivation to
combine different means for activating RTMS sensors
does not render its teachings irrelevant. See EWP Corp.
v. Reliance Universal Inc., 755 F.2d 898, 907 (Fed. Cir.
1985) (“A reference must be considered for everything it
teaches by way of technology and is not limited to the
particular invention it is describing and attempting to
protect.”) (emphasis in original). Dixit discloses the
proliferation of different RTMS tire sensors during the
relevant time and teaches the benefit of using one “gener-
ic or universal tool” to “communicate with tire condition
sensor units within different tire condition communica-
tion systems at different vehicles.” J.A. 651. The Board
properly recognized that “[e]ven though Dixit itself ad-
dressed the issue of only transmitting a data signal to a
transponder for storage in an associated memory, as
opposed to transmitting and receiving a response signal,
. . . the general problem of disparate RTMS communica-
tion components and protocols was known and defined in
the prior art.” J.A. 26. Thus, substantial evidence sup-
ports the Board’s finding that Dixit teaches the advantage
of having a universal tool in the RTMS environment that
can communicate with tire sensors in different RTMS
systems. That finding is relevant to the obviousness
inquiry because, when combined with the known problem
16 BOSCH AUTOMOTIVE SERVICE v. MATAL
of incompatible RTMS transmission protocols, it provides
a rational underpinning for the skilled artisan’s combina-
tion of multiple activation means into a single tool.
B. Objective Indicia
Bosch next argues that the Board failed to properly
credit Bosch’s objective indicia of nonobviousness. Accord-
ing to Bosch, it presented persuasive evidence of commer-
cial success, licensing, and industry praise that
establishes the patentability of the ’796 patent claims.
“Evidence of [objective indicia] is only relevant to the
obviousness inquiry ‘if there is a nexus between the
claimed invention and the [objective indicia].’” In re
Affinity Labs of Tex., LLC, 856 F.3d 883, 901 (Fed. Cir.
2017) (quoting Ormco Corp. v. Align Tech., Inc., 463 F.3d
1299, 1312 (Fed. Cir. 2006)). To determine whether a
nexus exists, “[o]ur cases require consideration of whether
‘the marketed product embodies the claimed features.’”
ClassCo, Inc. v. Apple, Inc., 838 F.3d 1214, 1222 (Fed. Cir.
2016) (quoting Brown & Williamson Tobacco Corp. v.
Philip Morris Inc., 229 F.3d 1120, 1130 (Fed. Cir. 2000));
see also Pro-Mold & Tool Co. v. Great Lakes Plastics, Inc.,
75 F.3d 1568, 1573 (Fed. Cir. 1996) (noting whether the
requisite nexus exists is a question of fact).
i. Commercial Success
Bosch relied on two pieces of evidence to establish
commercial success: (i) the declaration of Mr. Patrick
Pierce, Bosch’s director of marketing and diagnostic
product management; and (ii) claim charts comparing
commercially sold reset tools to the claims of the ’796
patent.
We agree with the Board that the Pierce declaration
lacks a proper evidentiary foundation. Mr. Pierce states
in his declaration that Bosch makes several models of
reset tools and asserts, without explanation, that he
“understand[s] that all of Bosch’s reset tools are covered
BOSCH AUTOMOTIVE SERVICE v. MATAL 17
by the ’796 Patent.” J.A. 592. Mr. Pierce also states that
Bosch licensed the ’796 patent to two other companies,
Bartec and ATEQ, in addition to selling its own reset tools
and that “Bosch had achieved by 2011, through sales of its
own products and licensed products, 89 percent of the
United States market.” J.A. 594. As the Board recog-
nized, however, the Pierce declaration lacks any explana-
tion or analysis to support his asserted “understand[ing]”
that these commercial reset tools are covered by, or coex-
tensive with, the claims of the ’796 patent. The Board
permissibly concluded that this conclusory testimony
lacks foundation. See, e.g., In re Cree, Inc., 818 F.3d 694,
703–04 (Fed. Cir. 2016) (agreeing with the Board that an
expert declaration that merely repeats, in conclusory
fashion, that the success of the product is due to the
claimed invention is insufficient to establish a nexus).
We also agree with the Board that Bosch’s second
piece of support, the claim charts, is flawed. In comparing
claim 1 to one of Bosch’s reset tools, the chart apparently
relies on a “Quick Start Guide” for Bosch’s Part No. 3833
as evidentiary support for the features of a particular
Bosch reset tool. The Board properly recognized, howev-
er, that the cited Quick Start Guide was not filed as an
exhibit nor was there any other testimony or evidence
corroborating the contents of the Quick Start guide.
Thus, the Board concluded that the claim chart both
violates the rule against hearsay and lacks foundation.
Moreover, the Board noted that Bosch submitted no
evidence comparing Bosch’s other allegedly successful
reset tools to the claims. The Board also found that
Bosch’s remaining claim charts, which sought to compare
Bartec’s AirAware 21240 and ATEQ’s VT 55 products to
claim 1 similarly violate the rule against hearsay and lack
foundation. We review such evidentiary rulings under the
abuse of discretion standard. REG Synthetic Fuels, LLC
v. Neste Oil Oyj, 841 F.3d 954, 958 (Fed. Cir. 2016) (re-
viewing Board’s hearsay finding in IPR proceeding under
18 BOSCH AUTOMOTIVE SERVICE v. MATAL
abuse of discretion). Having reviewed these claim charts,
and finding them lacking in foundation, we see no error in
the Board’s decision not to credit them.
ii. Licensing
Bosch presented evidence that two companies—ATEQ
and Bartec—licensed the ’796 patent as part of agree-
ments to settle litigation. We have explained, however,
that the mere fact of licensing, without more, is generally
not a strong indication of nonobviousness if it cannot also
be shown that the licensees did so out of respect for the
patent rather than to avoid litigation expense. See Iron
Grip Barbell Co. v. USA Sports, Inc., 392 F.3d 1317, 1324
(Fed. Cir. 2004). “Our cases specifically require affirma-
tive evidence of nexus where the evidence of commercial
success presented is a license, because it is often ‘cheaper
to take licenses than to defend infringement suits.’” Id.(quoting EWP Corp, 755 F.2d at 908).
Here, both of the licenses relied on by Bosch were ad-
mittedly entered into for the express purpose of settling
litigation. There is no evidence in the record that these
agreements arose out of a recognition and acceptance of
the merits of the claimed invention, rather than solely to
avoid the costs of defending against further litigation.
Given the lack of evidence that these licenses were en-
tered into out of respect for the ’796 patent, it was rea-
sonable for the Board to assign less credit to the licensing
evidence. See Iron Grip, 392 F.3d at 1324 (noting that
licenses “may constitute evidence of nonobviousness;
however, only little weight can be attributed to such
evidence if the patentee does not demonstrate a nexus
between the merits of the invention and the licenses of
record” (quoting In re GPAC Inc., 57 F.3d 1573, 1580 (Fed.
Cir. 1995))).
BOSCH AUTOMOTIVE SERVICE v. MATAL 19
iii. Industry Praise
Finally, Bosch asserts that its RTMS tool garnered
industry praise and awards, demonstrating its nonobvi-
ousness. In particular, Bosch submitted evidence that its
3834 and 3834EZ tools received two “Top 20 Tool” awards
from an industry magazine. As with Bosch’s other objec-
tive indicia arguments, the Board found that Bosch did
not tie these tools to the claims of the ’796 patent. We
agree. Just as with Bosch’s evidence of commercial suc-
cess, Bosch presented no evidence to establish that the
tools receiving these awards fall within the claimed
subject matter of the ’796 patent.
iv. Conclusion on Obviousness
Based on our review of the entirety of the record, we
conclude that the Board did not err in its obviousness
determination and that substantial evidence supports its
factual findings underpinning its conclusions. We there-
fore affirm the Board’s decision that claims 1 and 4–15
are unpatentable as obvious.
II. Claims 20–22
Bosch next argues that the Board erred in finding
claims 20–22 unpatentable as anticipated because
McClelland does not disclose the requisite plurality of
means for activating sensors. According to Bosch, McClel-
land contemplates using only one means for activating the
sensors—a 125 kHz signal. And it contends McClelland’s
assertion that “other frequencies or ranges of frequencies
may be suitable” is insufficient to support a finding of
anticipation because that phrase does not describe the
invention at the level of complete detail found in the
claims.
We disagree. The ’796 patent states that “each differ-
ent frequency of [continuous wave] signal generated [by
the tool] constitutes a different means for activating
RTMS tire sensors.” ’796 patent col. 5, ll. 27–30. Alt-
20 BOSCH AUTOMOTIVE SERVICE v. MATAL
hough McClelland explains that the preferred embodi-
ment transmits a 125 kHz continuous wave signal, it also
contemplates that exciter unit 16 can also transmit at
“other frequencies,” and, in particular, transmit signals
using “ranges of frequencies.” J.A. 626. We therefore find
that substantial evidence supports the Board’s finding
that McClelland discloses the requisite plurality of activa-
tion means, as that term is used in the ’796 patent.
Because we affirm the Board’s finding of anticipation, we
do not address the Board’s alternative finding that claims
20–22 are also obvious.
III. Motion to Amend
Because we affirm the Board’s decision that the origi-
nal claims are unpatentable, we next address Bosch’s
argument that the Board erred in denying its contingent
motion to amend. We review that denial under the APA,
5 U.S.C. § 706. Microsoft Corp. v. Proxyconn, Inc., 789
F.3d 1292, 1306 (Fed. Cir. 2015). We set aside the
Board’s action if it is “arbitrary, capricious, an abuse of
discretion, or otherwise not in accordance with law.” 5
U.S.C. § 706(2)(A). The Board rejected proposed amended
claims 23–35 as indefinite under 35 U.S.C. § 112, ¶ 2 5 and
proposed amended claims 36–38 as unpatentable over the
prior art. Among other arguments, Bosch challenged the
Board’s rejection of both sets of proposed amended claims
on the grounds that the Board impermissibly placed the
burden on Bosch to establish patentability.
5 Paragraphs 2 and 6 of 35 U.S.C. § 112 were re-
placed by § 112(b) and § 112(f) respectively when the AIA
took effect. Because the application resulting in the ’796
patent was filed before that date, we refer to the pre-AIA
version of § 112. See AIA § 4(c), (e), 125 Stat. at 296–97.
BOSCH AUTOMOTIVE SERVICE v. MATAL 21
A. Proposed Substitute Claims 23–35
Proposed substitute claims 23–35 all include the add-
ed means-plus-function limitation of “means for recording
a most recent means for activating signal that was uti-
lized to successfully activate a tire sensor.” The Board
concluded that this means-plus-function limitation could
not be construed and thus was indefinite because the
portions of the figures and written description on which
Bosch relied for the disclosure of an algorithm for per-
forming the recited function lacked sufficient disclosure. 6
Paragraph 6 of 35 U.S.C. § 112 allows “[a]n element in
a claim for a combination” to “be expressed as a means or
step for performing a specified function without the
recital of structure, material, or acts in support thereof,
and such claim shall be construed to cover the correspond-
ing structure, material, or acts described in the specifica-
tion and equivalents thereof.” However, for a claim
element recited in means-plus-function format, “the
specification must contain sufficient descriptive text by
which a person of skill in the field of the invention would
‘know and understand what structure corresponds to the
means limitation.’” Typhoon Touch Techs., Inc. v. Dell,
6 Bosch did not raise the issue either before the
Board or on appeal of whether the Board has the statuto-
ry authority to reject proposed amended claims that
introduce indefinite language on § 112 grounds. This
issue is thus not before us. We do note that inter partes
review is the successor to inter partes reexamination, see
Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2137
(2016), and that in the inter partes reexamination con-
text, we have observed that it was appropriate to raise
§ 112 challenges to proposed amended claims. See In re
NTP, Inc., 654 F.3d 1268, 1276 n.6 (Fed. Cir. 2011) (citing
37 C.F.R. §§ 1.552(a) (ex parte reexamination), 1.906(a)
(inter partes reexamination)).
22 BOSCH AUTOMOTIVE SERVICE v. MATAL
Inc., 659 F.3d 1376, 1383–84 (Fed. Cir. 2011) (quoting
Finisar Corp. v. DirecTV Grp., Inc., 523 F.3d 1323, 1340
(Fed. Cir. 2008)). When no structure in the specification
is linked to the function in a means-plus-function claim
element, that claim is indefinite under 35 U.S.C. § 112,
¶ 2. AllVoice Computing PLC v. Nuance Commc’ns, Inc.,
504 F.3d 1236, 1241 (Fed. Cir. 2007) (“[A] means-plus-
function clause is indefinite if a person of ordinary skill in
the art would be unable to recognize the structure in the
specification and associate it with the corresponding
function in the claim.”).
Compliance of a means-plus-function claim with the
definiteness requirement of § 112, ¶ 2 is a question of law
which may involve underlying factual findings. See Biosig
Instruments, Inc. v. Nautilus, Inc., 783 F.3d 1374, 1377–
78 (Fed. Cir.), cert. denied, 136 S. Ct. 569 (2015); BASF
Corp. v. Johnson Matthey Inc., No. 2016-1770, 2017 WL
5559629, at *3 (Fed. Cir. Nov. 20, 2017). We review the
overarching legal question de novo and any related factu-
al findings for substantial evidence. Biosig, 783 F.3d at
1378; Gartside, 203 F.3d at 1316.
We have previously held that a party challenging pa-
tent validity on indefiniteness grounds carries the burden
of proof. See, e.g., Chicago Bd. Options Exch., Inc. v. Int’l
Sec. Exch., LLC, 748 F.3d 1134, 1141 (Fed. Cir. 2014). In
Aqua Products, Inc. v. Matal, this Court recently ruled
that the patent owner does not bear the burden of proof
on the patentability of its proposed amended claims. 872
F.3d 1290 (Fed. Cir. 2017). Rather, the petitioner bears
the burden of proving that the proposed amended claims
are unpatentable “by a preponderance of the evidence.”
35 U.S.C. § 316(e). This burden of proof allocation applies
for questions of indefiniteness, as with other questions of
unpatentability.
In this case, the Board impermissibly assigned the
burden of proof on the issue of indefiniteness to Bosch.
BOSCH AUTOMOTIVE SERVICE v. MATAL 23
See J.A. 46, 49 (“[W]e determine that Bosch has not met
its burden . . . .”). For that reason, we vacate the Board’s
denial of Bosch’s contingent motion to amend with respect
to proposed claims 23–35 and remand for the Board to
evaluate the patentability of those proposed amended
claims consistent with our direction in Aqua Products.
See Aqua Products, 872 F.3d at 1311 (“[W]here the chal-
lenger ceases to participate in the IPR and the Board
proceeds to final judgment, it is the Board that must
justify any finding of unpatentability by reference to the
evidence of record in the IPR.”) (O’Malley, J.) (emphasis in
original).
B. Proposed Substitute Claims 36–38
The Board also impermissibly assigned the burden of
proof to Bosch as to proposed claims 36–38. In its final
decision, the Board concluded that it was “unpersuaded
that Bosch has demonstrated that the proposed substitute
claims are patentable” over the prior art. J.A. 51. Citing
its “informative” decision in Idle Free Systems, Inc. v.
Bergstrom, Inc., No. IPR2012-00027, 2013 WL 5947697(P.T.A.B. June 11, 2013), the Board stated that “[t]he
patent owner bears the burden of proof in demonstrating
patentability of the proposed substitute claims over the
prior art in general, and, thus, entitlement to add these
claims to its patent.” Id. For the same reasons as stated
above, we vacate the Board’s denial of Bosch’s contingent
motion to amend with respect to proposed claims 36–38
and remand for the Board to evaluate the patentability of
those proposed amended claims consistent with our
direction in Aqua Products. See Aqua Products, 872 F.3d
at 1311 (“[W]here the challenger ceases to participate in
the IPR and the Board proceeds to final judgment, it is the
Board that must justify any finding of unpatentability by
reference to the evidence of record in the IPR.”) (O’Malley,
J.) (emphasis in original).
24 BOSCH AUTOMOTIVE SERVICE v. MATAL
CONCLUSION
For the foregoing reasons, we affirm the Board’s deci-
sion that claims 1, 4–15, and 20–22 are unpatentable in
view of the asserted prior art. We vacate the Board’s
denial of Bosch’s contingent motion as to proposed substi-
tute claims 23–38 and remand for further proceedings
consistent with this opinion.
AFFIRMED-IN-PART, VACATED-IN-PART, AND
REMANDED
COSTS
No costs.