Federal Circuit Reverses-in-Part PTAB’s IPR Decisions for Wasica’s Tire Pressure Monitoring Patents

Written by Jordan E. Gottdank and Andrea Cheek

The Federal Circuit affirmed-in-part and reversed-in-part the PTAB’s final written decisions on Wasica’s tire pressure monitoring patents in Wasica Finance GmbH v. Continental Automotive Sys., Inc., No. 2015-2078 (Fed. Cir. Apr. 4, 2017).  The Federal Circuit affirmed the PTAB’s upatentability determinations based on certain claim constructions.  However, the PTAB erred in its construction of one dependent claim, so the Federal Circuit reversed the PTAB’s patentability determination for that claim.

Continental and Schrader filed two separate IPR petitions challenging the claims of Wasica’s patent directed to systems for monitoring vehicle tire pressure.  The PTAB ultimately found all but claims 6–9 and 20 unpatentable. Wasica appealed, disputing the PTAB’s claim constructions.  The Federal Circuit found no error with many of the PTAB's claim constructions and thus affirmed the findings of unpatentability.

Continental and Schrader raised separate arguments in cross-appeals of the PTAB’s determination that certain claims were patentable.  With respect to Schrader’s argument on claim 6, the Court found that substantial evidence supported the PTAB’s decision, as Wasica had provided expert testimony in support of its position that Schrader had rebutted with only “bare attorney argument.”  Regarding Continental’s argument, the Court explained that the prior art’s disclosure of a genus did not disclose the claimed species because Continental failed to identify a specific genus, establish the size of such genus, or name any other species within the genus.  Accordingly, the Court affirmed the PTAB’s decision finding claim 6 patentable, as well as claims 7, 8 and 20 which depend from claim 6. However, with respect to claim 9, the Court found the PTAB erred in its construction.  Because Wasica did not dispute anticipation under the correct claim construction, the Court reversed the PTAB’s decision that claim 9 was patentable.