Oct 21

PTAB Shows a Willingness to Intervene in Deposition Disputes

10929882_sExperienced district court litigators are reluctant to “call the judge” when a dispute arises during a deposition. Judges do not want to take the time to deal with mundane discovery disputes and parties do not want to get on the wrong side of the judge. The Office Patent Trial Practice Guide bucks this trend, explaining that “[t]he Board encourages the use of conference calls to raise and resolve issues in an expedited manner.” Id. at 48758. We think lawyers are still reluctant to make that call, but experience is showing that the Board is willing to intervene to settle procedural matters.

For example, in Toyota Motor Corp. v. American Vehicular Sciences LLC, IPR2013-00424, Patent Owner asked the Board to limit cross-examination of its expert witness by prohibiting questions directed to whether a feature would have been obvious to one with ordinary skill in the art. Paper 33 at 2. The Board granted the request.

In the Petition, Petitioner relied on a particular prior art reference as disclosing the claimed feature, not as rendering that feature as obvious. Petitioner argued that “obviousness, inherent disclosure, and the understanding of ordinary skill in the art…are inter-mingled as one integral discoverable topic.” Id. at 3. The Board, however, disagreed stating the Petitioner knew the difference between the separate concepts and that they topics were not one and the same. Additionally, the Board found Petitioner has no reason to inquire about the obviousness in light of that feature based on the specific grounds instituted for trial, the arguments in the petition, and absence of testimony in the expert witness’s declaration regarding obviousness of the feature. Id.

In short, deposition combatants take note – the Board is showing both a willingness to intervene in discovery disputes and to limit the testimony of witnesses to only that which is at issue in the IPR proceeding.

Oct 20

Later Priority Date for IPR-Challenged Patent Where No Written Description in Parent

4177464_sThe Board denied an interesting attack from Patent Owner who suggested that Petitioner’s argument, that the patent-at-issue was not entitled to the priority date of its parent, was barred in inter partes review proceedings because it is based on 35 U.S.C. § 112. SAP America, Inc. v. Pi-Net International, Inc. IPR2014-00414, involving US Patent No. 8,346,894; and parent patent, US Patent No. 8,037,158.

Petitioner argued that the subject matter of the challenged claims of the ‘894 patent were not disclosed in the parent ‘158 patent in a manner sufficient to meet the requirements of 35 USC §112, first paragraph. Order at 11. As such, per Petitioner, the ‘894 claims were not entitled to the priority date of the ‘158 parent patent.  Specifically, Patent Challenger argued that negative limitations in some of the ‘894 claims were not disclosed in the ‘158 parent specification. Id.

Patent Owner’s Preliminary Response argued that the petition exceeded the scope of inter partes review (which allows only challenges under 35 USC §102 and §103) by including an analysis under §112 in the challenge.

The Board began its analysis by noting that there is a difference between arguing that a claim is unpatentable based on §112 inadequate written description grounds and arguing that a claim is not entitled to a given priority date based on §112 grounds.  Further, Patent Owner provided no arguments on the merits against Petitioner’s assertions of lack of written description in the parent ‘158 patent.  Accordingly, after dismissing inapplicable case law cited by Patent Owner because of this distinction, the Board agreed with Petitioner and found that the ‘894 challenged claims were not entitled to the priority date of the ‘158 patent because the ‘158 patent did not provide an adequate written description of the challenged claims.

Oct 20

PTAB Disqualifies Art as Being Non-Analogous to Claimed Invention

13111368_sA limited number of cases, to date, have dealt with the issue of analogous prior art in an obviousness analysis. In Schott Gemtron Corp. v. SSW Holding Co., IPR2014-00358, the Board addressed this type of issue, finding in favor of Patent Owner that the art-at-issue was not analogous and, thus, disqualifying its use in the IPR proceeding.

The ‘561 patent relates to shelving which has a hydrophobic top surface arranged in a pattern to contain spills. At issue in the petition was whether Petitioner had established that a reference which relates to microscope slides was analogous art.  The Board noted two factors in this determination, either of which is sufficient to establish a reference as analogous:

  • if the reference is from the same field of endeavor as the claimed subjected matter, regardless of the problem addressed; or
  • if the reference, even though not within the field of the claimed invention, is reasonably pertinent to the problem with which the inventor is involved.

Further, the Board noted that the purpose of the claimed invention and the purpose of the prior art reference are important to the inquiry of whether the reference is analogous art.

That the reference was not in the same field of endeavor as the ‘561 claimed invention was not in dispute.  Both parties agreed that shelving and microscope slides were not in the same field.  However, Petitioner argued that the reference was reasonably pertinent to the problem faced by the inventor of the ‘561 patent.  Specifically, Petitioner argued that both the reference and the ‘561 patent pertained to the problem of how to contain a liquid in a predetermined area using a thin structure that extends minimally from a surface.

Patent Owner argued that the reference was not analogous because the reference (related to microscope slides) did not pertain to containment of spills (construed as “an accidental or unintentional release of liquid” by the Board) because liquids are intentionally put on microscope slides.  The Board agreed with Patent Owner, citing the recitation of a “spill containment” pattern in the ‘561 claims and considerable support for a spill containment feature in the ‘561 specification.  Therefore, the reference and the ‘561 invention did not address the same problem.

Further, the Board explained that even if the reference qualified as prior art, it was different enough from other cited references that one skilled in the art would not have been familiar enough with the reference to combine it with others to mount a successful obviousness challenge.  Therefore, the Board dismissed the obviousness challenge.

Oct 17

Infringement Contentions From Copending Litigation Not Allowed as Supplemental IPR Information

Glucosamine & MSM labelingThe circumstances under which the Board will entertain the inclusion of “supplemental evidence” in an inter partes review proceeding remains a moving target. It is worth noting, therefore, the case of Mentor Graphics Corp. v. Synopsys, Inc., IPR2014-00287, wherein the Board denied Petitioner’s efforts to include Patent Owner’s infringement contentions from a co-pending district court litigation involving the same patent. Paper 17 at 2. Petitioner claimed that these contentions reflect Patent Owner’s assessment of the claim scope. Id.

The Board found that the only relevance the contentions have is an alleged inconsistency as compared to arguments made by Patent Owner in the IPR. Id. at 3. They further determined that the contentions were served prior to any substantive discovery in the district court litigation and are supplanted by final infringement contentions as well as the District Court’s Order Construing Claims. Id. The Board, therefore, found that, while the district court’s construction may be informative, the preliminary infringement contentions are too tenuous to be relevant to the Board’s application of the broadest reasonable construction standard. Id. Thus, Petitioner’s Motion to Submit Supplemental Information was denied. The Board however noted that Petitioner can bring these contentions forward in its Reply, if appropriate as rebuttal. Id.

Oct 16

PTAB Offers Guidance Regarding Discovery in Inter Partes Reviews

iStock_000013492145XSmallStill confused about how much discovery you will be able to obtain in an IPR? Fear not, as two of the PTAB’s Administrative Patent Judges have weighed in with a primer on inter partes review discovery. The PTAB blog entry provides a nice overview of “routine” and “additional” discovery, including some insights into the reasons why the Board believes it is constrained in its grant of additional discovery in IPR proceedings.

To that end, as our statistics have made clear, only 28% of Motions for Additional Discovery have been granted through the 2nd year anniversary of IPR practice. Of note in the PTAB’s blog posting is that this low percentage is due to several key constraining forces on the Board. First, the AIA legislative history makes clear that additional discovery is confined to “particular limited situations, such as minor discovery that PTO finds to be routinely useful, or to discovery that is justified by special circumstances of the case.” Second, statutory deadlines for completing IPR proceedings require a much more streamlined procedure than the broad discovery allowed in litigation. Third, the Board notes the fact that discovery is only allowed when in the “interests of justice.” Because this standard is slightly higher than the “good cause” standard, the Board is more constrained on this issue than on other issues it is called on to decide.

Lastly, the article provides a helpful synopsis of a number of other PTAB decisions relating to additional discovery that can be a helpful reference.

Oct 15

PTAB Getting Tough on Petitions Seeking to Circumvent Page Limit

11011816_sOld habits are hard to break. Patent attorneys love to put forth every argument in their arsenal and let the chips fall where they may. Problem is, Congress set up inter partes review procedures to ensure a just, efficient and inexpensive resolution to the patentability of challenged patents. To that end, Patent Office regulations require a maximum, 60-page limit for the Petition. To get around this limit, Petitioners are increasingly seeking to stash a large portion of their arguments in an expert report that accompanies the Petition. In this way, citations in the Petition to these lengthy declarations are intended to allow Petitioners to include all of their arguments in their filing, but still stay within the 60-page limit for a Petition. Problem is…..the PTAB recognizes this technique for what it is – a way around the page limit. Numerous Petitions have now been denied as failing to comply with the page limit because Petitioner’s arguments are not contained “within the Petition.”  35 U.S.C. § 312(a)(3) (“A petition filed under section 311 may be considered only if…(3) the petition identifies, in writing and with particularity, each claim challenged, the grounds on which the challenge to each claim is based, and the evidence that supports the grounds for the challenge to each claim…”).

This scenario was presented in Fidelity National Information Services, Inc., v. DataTreasury Corp., IPR2014-00489, involving US Pat. No. 5,910,988. Petitioner asserted seven grounds of unpatentability and provided a claim-by-claim analysis to show all limitations taught or suggested in the art. Throughout the petition, Petitioner cited to a declaration by an expert that spanned nearly 300 pages and further comprised a 1,003-page, single-spaced claim chart labeled as Exhibit A.  The claim chart also incorporated the prior art references themselves.

The Board found that Petitioner used this system of multi-level incorporation to circumvent the page limit requirements of the petition. Within each ground, Patent Challenger used only a few pages of the actual petition to essentially incorporate many more pages of arguments by citation to the declaration, which further cited to the claim chart.

Under 37 C.F.R. § 42.22(a)(2), a petition for inter partes review must contain a “full statement of the reasons for the relief requested, including a detailed explanation of the significance of the evidence.”  In view of this requirement, the Board ignored much of Petitioner’s arguments, as they were contained in the declaration and claim chart, not the Petition itself.  As such, the Petition lacked sufficient citation to the references themselves to support the asserted grounds of unpatentability and the Board denied the petition.

UPDATE: Petitioner’s Motion for Rehearing was denied on October 9, 2014.

Oct 14

Board Considers Proof of Diligent Reduction to Practice

22397198_sPatent Owner’s attempt to disqualify prior art in an inter partes review failed because it could not show diligence from conception to reduction to practice in Medtronic, Inc., et al. v. Troy R. Norred, M.D., IPR2014-00395, U.S. Patent No. 6,482,228.

Patent Owner’s preliminary response sought to remove one of the allegedly-anticipatory references as prior art by providing evidence of conception prior to the effective filing date of the reference and diligence to reduction to practice (the filing of the patent application, in this instance). To remove a reference with an art-date during 1999, Patent Owner argued that the claims at issue of the ‘228 patent were conceived in late 1998 and there was reasonable diligence until reduction to practice. To support the argument, Patent Owner submitted documentary evidence and exhibits to the Board.

The Board was not persuaded, however, finding that the exhibits were not sufficiently linked to each claim limitation to prove reasonable diligence during the period between conception and filing of the patent application. The Board specifically pointed out that though some exhibits pertained to drawings present in the ‘228 patent, those drawings were not relied upon to illustrate claimed features of the invention. Further, the evidence presented did not show several claimed features of the ‘228 invention, including a “tissue valve.” Therefore, reasonable diligence was not proven for all claimed features and the reference at issue was deemed to be prior art.

Oct 13

Board Disagrees with Claim Construction of Prior Proceeding Before the PTO

22227585_sOne of the more disheartening trends to Patent Owners in inter partes review proceedings is the strong willingness of the PTAB to give little or no deference to prior Patent Office proceedings relative to the patent-at-issue. This creates considerable uncertainty relative to these important assets. This issue arose again in Toshiba Corp. v. Intellectual VenturesIPR2014-00317, US Patent No. 5,687,132, wherein the PTAB disagreed with a claim construction adopted in an earlier reexamination proceeding. The ‘132 patent relates to multiple-bank computer memories.

In the prior reexamination proceeding, the Examiner found that the claims at issue each included a requirement for a single memory, as opposed to two separate memories. Importantly, this feature was not found in the prior art and, thus, Patent Owner argued that the IPR Petition should be denied.

Pursuant to 35 U.S.C. § 325(d), in deciding whether to institute inter partes review, the “Director may take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office.”  Under this provision, the Board was within its authority to deny the Petition based on the Examiner’s reasoning in the reexam.  However, the Board opted not to take this route, as it disagreed with the Examiner’s claim construction.

At issue was the claim term “a memory.”  As mentioned, the Examiner found that “a memory” required there be a single memory, not two separate memories.  The Board, however, disagreed, noting that established precedent holds that articles “a” and “an” are construed to mean “one or more” absent clear intent to limit to “one.”  In the ‘132 patent, Patent Owner showed no clear intent to limit the scope of the claims to only one memory, and further explicitly stated that the invention is not limited to such an embodiment.  Therefore, the Board disagreed with the Examiner in the reexamination and construed “a memory” to mean “one or more memories.”

Because on this construction by the Board, Patent Owner’s arguments against anticipation failed and the Board granted the petition for inter partes review.

Oct 10

Patent Office Propaganda?

14009594_sAs you know, we take statistics pretty seriously here at IPR-PGR.com. After our most recent quarterly IPR Report indicated a claim survival rate of 27% (for claims actually put into an IPR trial), we were surprised to learn that the PTO is reporting a rate that is nearly double our calculated rate – 52%. After doing a little digging, it seems the Patent Office is including in its “survived” claims calculation those claims that were challenged in a petition, but ultimately not ruled upon because the case was terminated (i.e., via settlement between the parties). We do not include those claims in our calculation because it is difficult to discern the reasons why such cases are settled. In fact, we deem it more likely than not that proceedings are terminated because Patent Owners are fearful for the viability of their claims so, if anything, settlement indicates the claims would not have survived.

In the end, there is nothing misleading about the conclusions being drawn by the Patent Office, but like all statistics, they must be taken with a grain of salt.

Sep 25

Happy 2nd Birthday, Inter Partes Review – By the Numbers

IPR InsertWelcome to Volume 7 of our IPR-PGR Quarterly Report. Please contact us with any questions about these Patent Office procedures.

We take special note of three interesting statistics this quarter.  First, obtaining amended patent claims in these proceedings remains difficult.  After 1 motion to amend was granted last quarter, this quarter saw a complete shutout.  No additional motions to amend granted. Further, it seems that many new decisions, denying a motion to amend, add additional requirements and hurdles. It will be interesting to see if the argument currently before the Federal Circuit, that the broadest reasonable interpretation standard is inappropriate when a Patent Owner cannot effectively amend claims, is accepted.

Second, district courts continue to demonstrate an increased comfort with the ability of IPR proceedings to simplify issues at trial, including as compared to reexamination proceedings, in an increasing grant rate on motions to stay.  While this is still very much a judge and court-specific decision, defendants will succeed on a contested motion to stay almost 2 out 3 times.

Third, we took a broader look at claim survival this quarter, not just looking to the rate at which claims from an IPR “trial” were shown to be unpatentable in Final Written Decisions. We added in claims that were not put into a “trial” at all – raising the claim survival rate to 41%.  If only claims that are put into trial are considered, the survival rate is 27.8%.

The Federal Circuit has a mounting pile of appeal briefs relating to IPR practice – will we soon see another tidal wave of change as the patent appeals court weighs in?

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