CAFC in Bosch re-iterates 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.”

The appellant lost on obviousness of the old claims BUT did prevail as to the amendment issue:


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 unpatentability
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.



The Board [PTAB] had denied the motion to amend:


The Board then denied Bosch’s contingent motion to
amend. First, the Board found that the proposed apparatus
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.

(...)

The Board rejected proposed amended
claims 23–35 as indefinite under 35 U.S.C. § 112, ¶ 25 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.



The CAFC noted:



We have previously held that a party challenging patent
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.
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 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).


As to claims 36-38, the CAFC cited Aqua again:


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).