In a challenge relying in part on prior art previously considered during prosecution, Zodiac Pool was able to get 15 of 18 challenged claims of an Aqua Products patent into a trial for inter partes review in a case styled as Zodiac Pool Sys., Inc. v. Aqua Products, Inc. (IPR2013-00159), involving U.S. Pat. No. 8,273,183.

The ‘183 patent relates to “self-propelled apparatus and methods for controlling such apparatus for cleaning a submerged surface of a pool or tank.” The ‘183 patent further discloses methods for controlling the movement patterns of the cleaning apparatus as it moves over the bottom and sides of a pool or tank.

The Board’s construction of the term “a stationary directional discharge conduit” warrants discussion in light of its consideration of the indefinite article “a” contained in the term. After considering the specification and file history of the ’183 patent, the Board construed the term to mean “one or more discharge conduits.” Citing KCJ Corp. v. Kinetic Concepts, Inc. 223 F.3d 1351, 1356 (Fed. Cir. 2000), the Board adopted the long-established rule that an indefinite article, such as “a” or “an” is typically construed to mean “one or more” when found in an open-ended claim that contains the transitional phrase “comprising.” Order at 10.

Patent Owner sought to limit the Board’s review by pointing out that one of the prior art references cited by Petitioner was already considered by the Examiner during prosecution. The Board noted, however, that Petitioner presented different arguments and evidence that that before the Examiner, so the Board did not deny the grounds solely on the basis of 35 USC § 325(d).

Lastly, it is worth noting two arguments made by Patent Owner that were rejected by the Board relating to the obviousness grounds raised in the petition. First, regarding the idea that the prior art taught away from the incorporation of an internal pump, the Board found that, “the fact that the motivating benefit comes at the expense of another benefit…should not nullify its use as a basis to modify the disclosures of one reference with the teaching of another. Instead, the benefits, both lost and gained, should be weighted against one another.” In view of this analysis, the Board found that the references did not teach away. Order at 24. Second, with regard to Patent Owner’s argument that Petitioner failed to describe how an internal pump could be operably incorporated, the Board cited the Federal Circuit explanation that “[t]he test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference…Rather, the test is what the combined teachings of those references would have suggested to those of ordinary skill in the art.” As a result, the Board again rejected Patent Owner’s argument. Order at 25-26.

This rationale by the Board, that hurt Patent Owner’s argument in one regard, was helpful in another. Regarding one of the obviousness grounds set forth by Petitioner, the Board noted that Petitioner did not “address the inconsistency or conflict created by the proposed modification or to explain why, on balance the benefits of the proposed modification outweigh its deleterious effects on the operation and use of [the prior art’s] device.” Order at 33. Operability is, therefore, a viable argument for a Patent Owner before the PTAB.

In the end, after a lengthy challenge, Zodiac Pool was able to get 15 of 18 challenged claims of the ‘183 patent into a trial for inter partes review.