Mar 26

Board Discusses Difference Between Supplemental Evidence and Information

Glucosamine & MSM labelingStill confused by the difference between supplemental evidence versus supplemental information? Let’s try this again….In Norman International, Inc. v. Andrew J. Toti Testamentary Trust, Russell L. Hinckley, Sr. (Co-Trustee) and Robert F. Miller (Co-Trustee), IPR2014-00283, the Board addressed an issue of admissibility of evidence, focusing on the differences between supplemental evidence and information.

Petitioner sought to have an exhibit (“Exhibit 1010”) admitted as supplemental information, pursuant to 37 CFR § 42.123(a). For the Board to authorize filing of a document under § 42.123(a), the moving party (Petitioner in this case) must prove that the documents are supplemental information, not supplemental evidence.  The difference between supplemental information and evidence, under precedent of Handi-Quilter, Inc. v. Bernina Int’l AG, IPR2013-00364, Paper 30 at 3 (PTAB June 12, 2014) is, as follows:

“supplemental evidence—served in response to an evidentiary objection and filed in response to a motion to exclude—is offered solely to support admissibility of the originally filed evidence and to defeat a motion to exclude that evidence, and not to support any argument on the merits (i.e., regarding the patentability or unpatentability of a claim). Supplemental information, on the other hand, is evidence a party intends to support an argument on the merits.”  Decision at 6.

Accordingly, Petitioner bore the burden of proving that Exhibit 1010 supported an argument on the merits for the exhibit to be admitted. Patent Owner opposed by arguing that Exhibit 1010 was served in response to Patent Owner’s evidentiary objection to a different exhibit (“Exhibit 1002”). Specifically, Patent Owner objected to Exhibit 1002 and alleged it lacked the required English translation and affidavit attesting to accuracy of translation, and therefore Patent Owner argued that Exhibit 1010 did nothing more than attempt to remedy the deficiencies in admissibility of Exhibit 1002.  Id. at 5-6.

The Board disagreed with Patent Owner, noting that Exhibit 1002 did contain an English translation, and Exhibit 1010 addressed whether that translation was accurate. Accordingly, the Board found that Exhibit 1010 essentially contained information about what Exhibit 1002 actually disclosed. Since Exhibit 1002 contained a reference which served as a basis for grounds of unpatentability (an argument on the merits), the Board found that Petitioner had met its burden of proving that Exhibit 1010 was supplemental information and therefore allowable. Id. at 7.

Mar 25

PTAB Rules Lab Notebooks Insufficient to Prove Conception and Reduction to Practice

31859106_s (1)Swearing behind a reference is an enticing option for a Patent Owner, but the Board has again reminded parties that rigorous—and admissible—proof of conception and reduction to practice is still necessary.

This issue was addressed in Microsoft Corporation v. Surfcast, Inc., a consolidated opinion concerning four IPR petitions filed by Microsoft challenging one patent in which the Board found all claims unpatentable, and denied another motion to amend.  In its final written decision the Board rejected Patent Owner’s attempt to prove prior conception and reduction to practice despite extensive evidence.

Patent Owner tried to antedate a prior art reference via testimony from inventors regarding conception and reduction to practice.  The Patent Owner also proffered corroborating evidence in the form Exhibits consisting of emails between inventors, lab notebook pages, and other assorted papers.  Decision at 15.

Petitioner challenged the authenticity of the evidence, as all corroborating Exhibits consisted of inventor-generated documents and correspondence between inventors.  Patent Owner responded by providing inventor testimony to authenticate the exhibits. This was insufficient, because it meant the Patent Owner was essentially authenticating documents corroborating inventor testimony with further statements by the inventor.  Accordingly, the Board deemed the authentication defective, as it was not sufficiently independent.  Id. at 16-17.

Patent Owner further argued that corroboration was not necessary when a party attempts to prove conception and reduction to practice through use of physical exhibits.  The Board disagreed, that corroboration of the dates in the exhibits purported to establish conception is still required.  Id. at 17.

Perhaps envisioning an appeal, the Board still proceeded to analyze Patent Owner’s evidence of reasonable diligence towards a reduction to practice.  Patent Owner offered invoices from Patent Owner’s law firm, time entries from an interested party, and declarations of two interested parties who weren’t an inventor.  Here again, though, the Board rejected Patent Owner’s documentary evidence because it was not authenticated by a non-interested person (instead, the authentication declarants each had an interest in the outcome of the case).   Id. at 18-19.

The Board further noted that even if the corroboration was adequate, diligence was not proven on the merits.  The expert testimony purporting to support diligence in reduction to practice was by an expert who worked on later-assigned matters out of chronological order, creating a week of inactivity on the subject application and several gaps in activity.  Id. at 20-21.

Accordingly, the Board found that Patent Owner also failed to prove reasonable diligence to a reduction to practice.  Id. at 20.

Mar 24

PTAB Rejects Two Attempts by Patent Owners to Antedate Prior Art

6686163_sThe fact-based nature of conception/reduction to practice issues makes it worthwhile to consider a number of these types of cases as they arise. Here, we discuss such issues from two Board decisions, K-40 Electronics, LLC v. Escort, Inc., IPR2013-00240 and Handi Quilter, Inc. and Tacony Corporation v. Bernina International AG, IPR2013-00364. In both cases, the Board rejected Patent Owner’s attempt to antedate the prior art-at-issue.

The K-40 Electronics case involves US Pat. No. 6,670,905, relating to a radar detector and a location positioning device.  Decision at 3. Patent Owner relied upon declaration testimony from the inventor of the ‘905 patent, which stated that the claims at issue were conceived and reduced to practice prior to the effective art dates of two references relied upon by Petitioner. Of course, to establish reduction to practice, a party must show: (1) construction of an embodiment that meets all claim limitations; (2) determine that the invention would work for the intended purpose; and (3) sufficient evidence to corroborate inventor testimony as to the events.  ‘240 Decision at 11.

The inventor testimony stated that a 1992 prototype of the ‘905 invention was constructed prior to the priority date of the references-at-issue. and used a tape recorder to record geographical location of a radar signal. The inventor alleged that this feature met the claimed limitation of a “position determining circuit.” The Board rejected this contention, citing back to its claim construction determination, finding that a tape recorder did not determine geographic position; rather, a tape recorder was only an electronic notepad to record observations of the invention. Id. at 12-13.  Accordingly, the prototype did not reduce all claim limitations to practice.

Inventor also testified that a different 1996 prototype also had a “position determining circuit” in which software code was drafted to demonstrate global positioning capability.  The inventor was forced to concede, however, that the software did not disclose a position determining circuit. The inventor testified that some of the lines of software were missing and Patent Owner could not find any version of the software that contained the missing code.

This hole in the evidence presented by Patent Owner exposed a critical flaw in its objective evidence corroborating reduction to practice; namely, Patent Owner was using the software to corroborate expert testimony, but simultaneously had to use expert testimony to corroborate missing features of the software. Id. at 14-15. The Board also found several statements by the Inventor regarding claimed features of the invention allegedly being reduced to practice to generally lack adequate evidentiary corroboration. Id. at 15.  Accordingly, with a general lack of evidence, Patent Owner in IPR2013-00240 failed to prove conception and reduction to practice prior to the art date of two references relied upon by Petitioner.  Id. at 17.

The Handi-Quilter case involves US Pat. No. 6,883,446, which relates to a method and apparatus for stitching together fabric layers. ‘364 Decision at 12. Patent Owner generally failed to prove conception of several features of the ‘446 invention.  Specifically, Patent Owner did not provide evidence that the inventor had conceived of the limitation, that required controlling the stitch head or needle arm so that it actuates in response to detected movement, prior to the priority date of the art at issue.  Id. at 12.  In fact, the inventor admitted on the record that he had not decided on a control circuit for the prototype until after the art date of the reference at issue.

Further, the Board questioned the reliability of the evidence presented to establish conception and reduction to practice.  The evidence presented was a hand-written sketch of the invention with a date well before that of the reference at issue. Though the hand-written document had a date printed on it, the record showed no corroboration beyond the inventor’s sworn statement that this date was in fact the date the document was created or last-modified.  Id. at 13.  In fact, the document was not seen by anyone besides the inventor until seven years after the date written on the paper.  Further, other testimony attempting to corroborate the inventor’s sworn statement of conception was found to be either unreliable or consisting of bare legal conclusions, not underlying facts. Id. at 14-15. Lastly, demonstrations of the invention by the inventor as detailed by the inventor’s wife weren’t persuasive because the inventor’s wife either did not actually witness the demonstration or the demonstration was only of part of the invention, not all claimed features.  Unsworn statements by the inventor’s sons also weren’t given weight because they weren’t sufficiently independent from the inventor. Id. at 16. Accordingly, the Board found that Patent Owner had failed to prove conception and reduction to practice in attempting to antedate a prior art reference.

Mar 23

PTAB Declines to Limit Claim Based on Disclosure of Only One Embodiment

29673420_s (1)The effect of the Broadest Reasonable Interpretation claim construction standard in inter partes review proceedings, forcing a decision that may be different than what could have been expected in district court litigation, has proven tangible in several PTAB decisions. For example, in K-40 Electronics, LLC v. Escort, Inc., IPR2013-00240, the Board construed the challenged claims broadly, despite the fact that the specification only disclosed a single embodiment that may have otherwise dictated a more narrow claim construction. The decision involved US Pat. No. 6,670,905, directed to the combination of a radar detector and location positioning device.  Decision at 3.

Of interest in this proceeding was the Board’s construction of the claim terms “interface connector” and “communication circuitry.”  Patent Owner argued that the two terms should be construed to require a circuit supporting a wired, digital connection – the only embodiment disclosed in the ‘905 specification. More specifically, Patent Owner argued that the claim should be interpreted to exclude wireless interfaces. Id. at 8.

Indeed, the specification did only articulate specific, wired standards: “The interface connector used by the receiver may take other forms than the known USB standard. It may use any computer interface standard (e.g., IEEE 488), or an automotive wiring standard, the J1854, CAN, BH12 and LIN standards, or others.”

Although only specific embodiments of wired connections were discussed, the Board disagreed with Patent Owner and declined to narrow the construction of the limitations-at-issue, focusing on the italicized language above. Specifically, because the specification suggests that “other” connections were contemplated, wireless connections were covered by the claims. Id. at 8.  Further, the Board noted that it will not read additional limitations into a claim unless a special definition is set forth the specification of the patent.  Accordingly, with no special definition present, the Board declined to limit the claim based on the disclosure of only one embodiment in the ‘905 specification. Id. at 9.

Mar 12

Teaching Away Arguments Fail to Gain Traction with PTAB

19802083_s (1)A favored, but largely unsuccessful, line of defense for Patent Owners in inter partes review proceedings is the argument that the prior art references-at-issue teach away from their combination. A typical form of this teaching away argument arose in IPR2013-00465, styled as SDI Tech. v. Bose Corp., involving US Pat. No. 8,364,295, where Patent Owner argued that the references of record taught two different combinations other than the one that allegedly renders the ‘295 claims obvious, and that these separate teachings constituted teaching away from the claimed invention of the ‘295 patent.  Decision at 19.  The Board rejected this argument.  Id. at 4.

The ‘295 patent relates to audio systems for playing sound from computer files and computer network radio stations.  Patent Owner contended that the references asserted by Petitioner taught two alternative combinations, in addition to the combination asserted by Petitioner, each of which are contrary to the claims at issue.  In the first alternative combination, the computer would be configured to accept the remote control signal and control of all functions would go through the computer, not the speaker system.  This is contrary to the claims at issue, which require the speaker system to control the computer.  The second alternative combination involved the use of a single universal remote to communicate with the device.  This is contrary to the ‘295 claims, which required two separate signal types from the controlling remote(s). Id. at 20.

In rejecting Patent Owner’s arguments, the Board reiterated the principle that disclosure of alternative embodiments does not constitute teaching away.  The Board elaborated that circumstances could arise where the ordinary artisan would choose each of the different combinations depending on his/her purpose.  Id. at 21.

The Board further noted that adding Patent Owner’s alternative combinations to Petitioner’s proposed combination “renders the latter no more than an obvious selection from a finite number (here, three) of predictable solutions.”  Id. at 23.  The three combinations, according to the Board, are essentially three predicable rearrangements of the same elements usable for their intended purpose, and thus, precisely how to arrange these elements would have been only a matter of design choice for the skilled artisan to arrive at the claimed invention.  Id.

Patent Owner also argued that Petitioner’s expert testimony was driven by hindsight because the testimony did not describe the two alternative combinations proposed by Patent Owner.  The expert responded that he did not discuss Patent Owner’s proposed combinations because they would not render the claims obvious.  The Board decided that such focusing of expert testimony on allegedly invalidating combinations was not hindsight bias, noting particularly that the issue is not whether the expert did not describe combinations of the references that would not have rendered the claims obvious, but whether the expert provided a reason, with rational underpinning, for combining the references in the way proposed by the expert.  Id. at 22.

Mar 09

Board Disallows Later IPR Petition Directed at Previously-Challenged Patent

3919013_sIn almost two-and-a-half years of IPR practice, the Board has been more than willing to reconsider arguments that have previously been presented to the Patent Office, via examination, reexamination, or reissue. In fact, it’s news when the Board invokes 35 USC §§ 315(d) or 325(d) to prevent a challenge brought in a Petition. To that end, we note herein how the Board invoked § 315(d), in IPR2014-00783, Customplay, LLC, v. Clearplay, Inc., to deny a petition because it relied on prior art that could have been presented in an earlier petition filed by the same Petitioner regarding the same patent.

In a separate IPR proceeding (IPR2014-00484), Patent Owner challenged the same claims of the patent-at-issue. Decision at 6. The Board instituted review in that prior case, but not for all claims requested by the Petitioner. Id. In the later petition, the Petitioner relied on new arguments concerning the previously-presented art, and a new prior art reference, to attack some of the claims for which review was previously denied.  Decision at 8.

Section 325(d) allows the Board to reject a petition where the “same or substantially the same prior art or arguments were previously presented to the [Patent] Office.”  Here, Petitioner argued that it could not have reasonably raised its current arguments in the first petition because that earlier petition “was predicated on claim constructions and interpretations that are broader than the claim constructions and interpretations” that the Board applied in deciding to institute review.  Decision at 9.

The Board rejected Petitioner’s second petition.  As to the new arguments based on previously-presented art, the Board stated that a “decision to institute review on some claims in a first inter partes review, however, should not act as a how-to guide for the same Petitioner filing a second petition for inter partes review challenging claims that it unsuccessfully challenged in the first petition or claims that it reasonably could have challenged in the first petition.”  Decision at 9.  The Board also rejected the arguments that were based on newly-added prior art, because Petitioner did not argue the new prior art added anything over the previously-presented art, and because the Petitioner did not argue that the newly-added prior art was unavailable to it when it filed the first petition.  Decision at 12.  Accordingly, the petition was denied.  Decision at 13.  See also Conopco, Inc. dba Unilever v. The Procter & Gamble Company, IPR2014-00628.

[UPDATE – It is worth noting that a different panel of the Board came to a different conclusion in Flir Systems, Inc. v. Leak Surveys, Inc., IPR2016-00065, wherein the Board found that, despite the fact that there was considerable overlap in the art considered in an earlier and later Petition, because the manner in which the art was combined differs, the second petition was not barred.]

Mar 06

Motion to Exclude is Proper Vehicle in IPR to Remove Reference as Evidence

34447773_sPatent Owners have often made the argument that certain art of record in an inter partes review is not actually prior art. The proper way to remove that evidence from the record is via a Motion to Exclude, not merely by making arguments in a Patent Owner Response or at the oral hearing. This issue, and an improper attempt at exclusion, arose in ABB, Inc. v. Roy-G-Biv Corporation, IPR2013-00063, involving US Pat. No. 6,513,058.

Earlier in a previous inter partes review proceeding, Patent Owner had argued that the invention of the ‘058 patent was conceived and reduced to practice prior to the effective art date of the relied-upon prior art references. As such, Patent Owner asserted that the references relied upon in the challenge were not available as prior art. Decision at 5-6. The Board rejected this argument in the earlier IPR as lacking adequate evidentiary support for diligence in reducing the invention to practice. Id. at 6.

In this later proceeding, Patent Owner made additional arguments and cited additional cases, all in an unsuccessful attempt to convince the Board. As a backup argument, Patent Owner argued that Petitioner failed to meet its burden of proof in establishing the publication date of one of the references, and therefore the reference was not eligible as prior art. This challenge, however, was made at the final hearing – not as part of a motion to exclude the prior art reference. Id. at 8.

The Board found that Patent Owner’s argument was untimely, including that the final hearing “is not the place to advance a new theory of the case.” Order at 9. Further, pursuant to 37 C.F.R. § 42.64(b)(1), an objection to the admissibility of a reference must be served within ten business days of the institution of the trial. This must be followed by a motion to exclude the reference. Id. at 8. However, Patent Owner did not raise an objection to the reference nor did it file a motion to exclude.  With these actions now time barred, the Board deemed Patent Owner’s attempt to challenge the art-date of the reference to be untimely. Id. at 9.

Mar 05

Another IPR Petition Comes Up Short for Failing to Adequately Show Rationale to Combine

9710318_sMany Patent Owners are finding success in undermining the challenge grounds of a Petition by arguing that the Petition fails to make an adequate showing that a person of ordinary skill in the art would have combined the relied-on references. That was the case in Zimmer Holdings, Inc. and Zimmer, Inc. v. Bonutti Skeletal Innovations LLC, involved US Pat. No. 7,837,736, where the Board rejected a Petition due to an inadequate combination argument.

Relying on expert testimony, the Petitioner argued that it would have been obvious to the ordinary artisan to substitute a “dovetail joint” described in one reference (Beuchel) for the “abutment and recess” structure described in a second reference (Walker) to arrive at the ‘736 invention.  Specifically, the expert testified that the “dovetail” joints of Beuchel perform the same function as the “abutment and recess” of Walker—i.e., “constrained movement of meniscal components relative to the tray in mobile bearing knee implants.”  With that predicate, the expert posited that substituting the “dovetail” joints in place of the “abutment and recess” joints was simply a matter of design choice.

The Board disagreed, because Beuchel’s “dovetail” joints had substantially different structure and function than Walker’s “abutement and recess.”  Decision at 20–21.  Specifically, Beuchel’s “dovetail” joint functioned to limit or prevent rotation, while Walker’s “abutment and recess” functioned to facilitate rotation.  Decision at 21.  Accordingly, the Board found that Petitioner failed to support its substitution argument with “adequate articulated reasoning with rational underpinnings.”  Decision at 21 (citing In re Gal, 980 F.2d 717, 719 (Fed. Cir. 1992) (design choice is not a sufficient rationale for obviousness where the structure recited in claim and the function it performs are different from the prior art).  Accordingly, the Board declined to institute review.  Id.

Mar 04

Legislative Update – STRONG Patents Act Takes Aim at IPR and PGR

8797259_s (1)With the new Congress firmly seated and various legislative efforts gaining momentum, another effort to reform patent system is taking its share of the spotlight. In early February, the House of Representatives took the first step with Rep. Bob Goodlatte re-introducing the Innovation Act, the identical patent-reform legislation that overwhelmingly passed the House in 2013.

Not to be outdone, a group of 3 senators has proposed its version of patent reform, including taking direct aim at post-grant review proceedings. In a bill sponsored by Sens. Chris Coons, Dick Durbin, and Mazie Hirono, known as the STRONG Patent Act of 2015, significant changes to post-grant proceedings would be made, including:


  1. Claim Construction: The standard for construing claims in post grant proceedings would be changed from “Broadest Reasonable Interpretation” to a construction similar to that performed in a district court, pursuant to the Phillips decision; relatedly, if a court had previously construed a claim limitation, the Board must consider that construction;
  2. Motions to Amend: Removes the requirement that only one motion to amend may be filed and states that, “a motion to amend filed by the patent owner shall be granted if the proposed number of substitute claims is reasonable”;
  3. Burden of Proof: In deference to the presumption of validity of section 282(a), the burden of proof would be changed from “preponderance of the evidence” to “clear and convincing evidence” for claims that had previously been issued; for claims that are amended in the proceeding, the preponderance of the evidence would be the standard applied;
  4. Standing: A petition to institute an IPR could not be filed unless the Petitioner had either been sued for infringement or charged with infringement;
  5. Discovery of Real Party in Interest: Would explicitly allow discovery of evidence to identify the real party-in-interest;
  6. Evidence Supporting Patent Owner Preliminary Response: Would allow a Patent Owner to submit the same type of evidence in the preliminary response that a Petitioner can submit in a Petition; additionally, if a reply is allowed to Petitioner in response to the Patent Owner Preliminary Response, then the Patent Owner would have the opportunity to file a sur-reply;
  7. Coordination with Other Proceedings: No IPR can be instituted if the patent is already subject to reissue or reexamination proceedings;
  8. Composition of the Board: Any judge that participates in the decision to institute trial may not participate in the actual “trial.”


The provisions for PGR are substantially similar to those set forth above, relative to IPR, except that, for standing, the Petitioner must demonstrate a “reasonable possibility” of being sued for infringement or charged with infringement; or that there is a competitive harm related to the validity of the patent.


Among the other aspects of the proposed STRONG Patents Act, include:

  1. Ex parte reexamination could not be filed more than one year after the requester has been served with a complaint alleging infringement;
  2. Form 18 of the Federal Rules of Civil Procedure is eliminated;
  3. PTO Fee diversion is ended;
  4. Changes the standard for finding willful infringement to a “preponderance of the evidence” standard;
  5. Ensures that, for contributory or induced infringement, it is not a requirement that the steps of the patented process be practiced by a single entity;
  6. Expands the entities that are considered “institutions of higher education” for purposes of being considered a micro entity;
  7. Expands the Patent Pilot Program to address “special issues raised in patent infringement suits against individuals or small business concerns”; and
  8. Making the “pattern or practice of sending written communications that state or represent that the recipients are or may be infringing,” under certain circumstances, an unfair and deceptive practice under the Federal Trade Commission Act.

Each side to the debate has now set forth its opening offer – it will be interesting to watch the negotiations unfold to see if another major patent reform effort will be successful.

Jan 30

27 Months of Inter Partes Review – By the Numbers

UntitledWelcome to the 8th Volume of our IPR-PGR Report. Please let us know if you have any questions about the information contained therein, or would otherwise like to discuss Patent Office litigation. We note a few interesting stats from this latest quarter. First, we took a look at success rates for IPR proceedings by broad subject matter class. Of interest is the fact that it is more likely that an IPR petition directed to a chem/bio invention (86%) will be cancelled versus an electrical (82%) or mechanical patent (74%). Second, the claim cancellation rate has crept up a bit again, with only about 19% of claims that are put into an IPR trial surviving the Final Written Decision. Relatedly, the overall claim survival rate has dropped from 41% to 37%. Lastly, we have provided some information regarding the district courts with the highest and lowest win rates for contested motions to stay. Not surprisingly, the Eastern District of Texas is one of the districts that is least likely to stay litigation in view of an IPR.

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