Aug 29

Corroborating Evidence Insufficient in Final Written Decision Canceling All Claims

iStock_000028428166_SmallOne of the more fact-dependent inquiries in patent disputes is the issue of conception and reduction to practice.  This issue was raised in an inter partes review setting in CBS Interactive Inc. v. Helferich Patent Licensing, LLC, IPR2013-00033, Paper 122 (Final Written Decision), wherein Patent Owner sought to swear behind cited prior art by filing a declaration from the inventor and a handwritten specification claimed to have been written before the critical date. Id. 44.

The art at issue was 35 U.S.C. § 102(e) art — filed “before the invention by the applicant for patent.”  In the inventor’s declaration, he testified that he conceived the subject matter of each challenged claim prior to the filing date of the prior art.  As corroborating proof of this earlier invention, the inventor cited to an undated, handwritten specification allegedly describing the claimed invention. The inventor testified that he completed the handwritten specification prior to the critical date.  Id. at 45.

Of course, an inventor’s testimony, standing alone, is insufficient to prove conception — some form of corroboration is required.  In re NTP, Inc. 654 F.3d 1279, 1291 (Fed. Cir. 2011). Id. at 45. The Board determined that the undated, handwritten specification did not qualify as corroborating evidence because it was undated and unsigned. The inventor’s testimony, that he prepared and completed the specification prior to the critical date, was deemed insufficient to corroborate the date of the specification.  Further, an inventor’s own testimony is not “independent” corroboration of proof that comes from the inventor himself.  Id. at 47.  Failing to swear behind the critical prior art, the Board ultimately determined that all challenged claims were unpatentable.

Aug 28

Conclusory Declaration Testimony Again Leads to Unsuccessful IPR Petition

SONY DSCSome of the best inter partes review lessons can be learned from decisions denying institution of an inter partes review trial.  Among the chief grounds for denying petitions, failure to provide competent expert testimony in support of a petition, presented itself again in Panasonic Corp., et al. v. Optical Devices, LLC, IPR2014-00302, Paper 9.

In Panasonic, Petitioner asserted two anticipation grounds of unpatentability, relying on two separate references. In support of the anticipation arguments, the Board found that Petitioner improperly picked and chose from various descriptions of each respective reference to allegedly disclose all limitations of the challenged claims, rather than pointing to a single anticipatory embodiment.  The impropriety of this course of action was discussed previously.

Of particular interest in this case was the Board’s treatment of declaration testimony presented by Petitioner.  More specifically, Petitioner’s expert’s declaration simply stated that each of the two allegedly-anticipatory references disclosed all required limitations, including inherently disclosing a critical limitation. The declaration testimony provided little detail or support, however, beyond the bare statements of anticipation. Accordingly, the declaration testimony was judged by the Board to be conclusory, particularly with respect to the inherent disclosure element.  As such, the Board gave the testimony little weight.

In view of the weak anticipation arguments and conclusory declaration testimony, Patent Challenger failed in getting any challenged claims in to an IPR trial.

 

Aug 27

More Fun with the One-Year Time Bar of § 315(b)

hourglassThe nuances of the time bar of 35 U.S.C. § 315(b) continue to be explored in various IPR decisions.  In Amneal Pharmaceuticals, LLC v. Endor Pharmaceuticals Inc., IPR2014-00360, Paper 15, Patent Owner asserted that the Petition for Inter Partes Review was time-barred under § 315(b) because Petitioner received an amended complaint in co-pending litigation, asserting the patent-at-issue, in conjunction with the filing of a motion for leave to serve an amended complaint.  As explained below, the Board found that the petition was not barred, however, because service of the amended complaint, pursuant to § 315(b), could only have been accomplished after the Court granted leave.  Service of the amended complaint, as part of the motion to amend, is not service under § 315(b).

More specifically, § 315(b) provides that an inter partes review may not be instituted based on a petition “filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent.”

On December 11, 2012, the ’216 patent issued to Patent Owner. Prelim. Resp. 5. On January 9, 2013, Patent Owner filed an “Unopposed Motion to Amend Complaint Under Rule 15(a)” in an ongoing litigation between Petitioner and Patent Owner.  Attached to the motion was the proposed amended complaint.  On January 14, 2013, the Court granted the motion.  In accordance with that order, on January 17, 2013, Patent Owner filed its Second Amended Complaint. Id at 3. The IPR petition in this proceeding was filed on January 16, 2014 – more than one year from the date that the motion was filed, attaching the complaint, but less than one year from the date that the complaint was actually filed, following the court’s grant of the motion to amend.

As such, Patent Owner requested denial of the Petition, arguing that Petitioner was time-barred from seeking inter partes review of the ’216 patent under § 315(b), because Petitioner was served with a complaint on January 9, 2013, i.e., more than one year before the January 16, 2014, filing date of the Petition in this proceeding. Id. at 4.  In support of its motion, Patent Owner pointed out that, per local rules of the court, electronic filing is equivalent to service.  Thus, according to Patent Owner, when the district court electronically mailed the electronic notice regarding the Motion to Amend Complaint to Petitioner, it “effected service of the Second Amended Complaint on January 9, 2014.” Paper 15 at 4. Because §315(b) refers to being “served,” Patent Owner contends that it does not matter that Patent Owner did not file the Second Amended Complaint until January 17, 2013; instead, it only mattered when Patent Owner served the Second Amended Complaint, which, according to Patent Owner, occurred on January 9, 2013. Id.

The Board was not persuaded by this creative argument from Patent Owner. Instead, the Board agreed with Petitioner that Patent Owner did not “have the legal right to file or serve the Second Amended Complaint (‘SAC’) until the District Court granted it leave to do so on January 14, 2013.” Id. Petitioner cited Federal Rule of Civil Procedure 15(a)(2), which permits a party to file an amended pleading “once as a matter of course,” but requires that “in all other cases, a party may amend its pleading only with the opposing party’s written consent or court’s leave.” Fed. R. Civ. P. 15(a)(2). Under this rule, according to Petitioner, Patent Owner required the district court’s leave to file the SAC. Reply 3. Paper at 4. Thus, Patent Owner filed and served the SAC on January 17, 2013, after the court granted that leave. Id.  The Board agreed.

Aug 22

§ 325(d) Used by the Board to Deny Petitions for Inter Partes Review

iStock_000011114669SmallWe wrote yesterday about the Board’s willingness to come to a different conclusion than that of the original patent examiner on the adequacy of a 131 declaration.  Further, we have discussed in the past how the Board has been more than willing to reconsider arguments and art that were previously before the Patent Office.

It is fair to point out, therefore, that the Board is sometimes willing to provide deference to previous decisions.  In Unilever, Inc. v. The Procter & Gamble Co., IPR2014-00506 and IPR2014-00507, the Board denied two petitions for inter partes review because substantially similar arguments were presented (and denied) in previous IPRs.

In the previous proceeding (IPR2013-00505), Unilever had challenged 33 claims of the patent-at-issue. The petition was denied as to several challenged claims of the patent-at-issue, and Unilever subsequently challenged the denied claims again in IPR2014-00506, following an unsuccessful Request for Rehearing. Unilever further requested joinder of the ‘506 proceeding with the much earlier ‘505 proceeding.

Pursuant to 35 U.S.C. § 325(d), the Board is permitted to deny petitions that raise substantially the same prior art or arguments previously presented to the Office. In applying the facts of the ‘506 proceeding to this statutory provision, the Board made several key observations:

(1) The later ‘506 proceeding challenged each of the claims that were denied review in the earlier ‘505 proceeding;
(2) The later ’506 proceeding involved thirteen pieces of prior art, six of which were also included in the ‘505 proceeding;
(3) Patent Owner provided no evidence or indication that the references that were new in the ’506 proceeding were not available at the time of the filing of the ‘505 proceeding;
(4) Nine of the thirteen grounds of unpatentability in the ’506 proceeding rely, at least in part, on references presented in the ‘505 proceeding; and
(5) There were several arguments in the ‘506 proceeding which mirrored the same deficient arguments of the ‘505 proceeding, with the only difference being reliance on new prior art which did not strengthen the deficient arguments.

Accordingly, based on these facts, the Board rejected the petition in the ‘506 proceeding as raising substantially the same prior art or arguments previously presented in the ‘505 proceeding, pursuant to 35 U.S.C. § 325(d).

The Board addressed nearly identical issues in IPR2014-00507. In a previous proceeding (IPR2014-00509), Unilever had previously challenged several claims of the ‘300 patent. The petition was denied as to several challenged claims of the ‘300 patent, and Unilever subsequently challenged these denied claims in IPR2014-00506 following an unsuccessful Request for Rehearing. Unilever further requested joinder of the ‘507 proceeding with the ‘509 proceeding.  Using a substantially similar analysis as that presented in the ’506 proceeding, the Board rejected the petition in the ‘507 proceeding as raising substantially the same prior art or arguments previously presented in the ‘509 proceeding under 35 U.S.C. § 325(d).

Aug 21

131 Declaration That Was Successful in Prosecution Deemed Insufficient in Inter Partes Review

iStock_000019749872SmallThe Board proved willing to overturn a previous patent examiner’s judgment in another type of issue in Iron Dome LLC v. E-Watch, Inc., IPR2014-00439, where, in instituting an inter partes review trial, the Board found that Patent Owner did not properly swear behind a prior art reference, despite the fact that, during earlier prosecution, the Patent Office found that the prior art was properly antedated.

The prior art at issue had an effective filing date of April 25, 1995 qualifying it as prior art under 35 U.S.C. §§ 102(a) and 102(e) because it was not issued or published more than one year prior to the effective filing date as the ‘871 patent, but the effective filing date was earlier than the effective filing date of the ‘871 patent. Id.

During the original prosecution of the patent-at-issue, the Examiner found that the inventor’s submitted declaration sufficiently antedated the prior art reference. Id at 6. The Board took a fresh look at the declaration in the inter partes review, however, and disagreed with the Examiner’s earlier determination. Id at 8. As such, the prior art was relevant in the IPR and the Board determined that there was a reasonable likelihood that the challenged claims were unpatentable in view of that art.

Patent Owner will, of course, have another opportunity with its Patent Owner Response to seek to antedate the prior art at issue, but in the meantime, this is another example of the Board’s willingness to reconsider issues that were purportedly decided during previous examination or reexamination.

Aug 19

Failure to Identify Structure of Means-Plus-Function Limitation Results in Denial of Ground

Reference booksParties have tried different strategies in addressing claim construction in inter partes review petitions. Some have relied strictly on a generic “broadest reasonable interpretation” argument; others have followed a more traditional Phillips analysis – both strategies having achieved varying levels of success.  What is clear, however, is that when a challenged claim is in means-plus-function format, the IPR rules require that a Petitioner set forth the structure that corresponds to the recited function of the challenged claims.  Panel Claw, Inc. v. SunPower Corp., IPR2014-00388.

Among the limitations at issue in Panel Claw were “means for interengaging adjacent photovoltaic assemblies into an array of photovoltaic assemblies.” and “means for interlocking one said photovoltaic assembly to another said photovoltaic assembly.”  Of course, recitation of the term “means” in a claim limitation creates a rebuttable presumption that 35 U.S.C § 112, ¶ 6 governs construction of the claim. Further, when the presumption is that a limitation is a means-plus-function limitation, under 37 C.F.R. § 42.104(b)(3), Petitioner is required to identify the structure in the specification that corresponds to the recited function.

In Panel Claw, however, Petitioner argued first that the limitations which recited the term “means” were purely functional and therefore cover any suitable means for accomplishing the stated function. This argument contradicted a determination in a related lawsuit (SunPower Corp. v. Sunlink Corp., Case No. 08-Case IPR2014-00388 cv-2807 (N.D. Cal.)) which deemed the limitations at issue to be means-plus-function limitations. Further, Petitioner then failed to assert a back-up argument identifying any corresponding structure to the limitations-at-issue.

The Board found that limitations at issue were means-plus-function limitations, the constructions of which were governed by 35 U.S.C § 112, ¶ 6. By failing to identify corresponding structures, Petitioner violated 37 C.F.R. § 42.104(b)(3) and, as such, the challenged claims containing the means language were deemed patentable.

Aug 18

Board Defines Role of “Common Sense” in Obviousness Arguments

Musical abstractDespite news reports and blog entries to the contrary, all is not doom and gloom for Patent Owners in inter partes review proceedings.  In SDI Technologies, Inc. v. Bose Corporation, IPR2014-00346, the Board denied an obviousness argument that sought to fill gaps in a prima facie case of obviousness through the use of “common sense.”

Petitioner’s obviousness argument, relative to several of the challenged claims, relied solely on attorney arguments and “common sense” to provide one of the claimed elements.  Petitioner argued that mere common sense would have led one of skill in the art to modify the prior art to come up with the missing element.

The Board disagreed, noting that, while common sense may be used to show motivation to combine prior art references or reasons to modify the references, merely reciting the words “common sense,” without more, cannot establish a missing element from the prior art. Order at 18-19, citingMintz v. Dietz & Watson, Inc., 679 F.3d 1372, 1377 (Fed. Cir. 2012). Given the lack of evidence or expert testimony to support its common sense argument, the Petitioner’s obviousness argument failed with respect to several challenged claims.

Aug 15

Board Grants Rare Motion to Submit Supplemental Information

Glucosamine & MSM labelingIn general, all the evidence a party seeks to rely upon in an inter partes review must be contained in either the Petition (for Petitioner) or Patent Owner Response (for Patent Owner).  37 C.F.R. § 42.123 (b), however, allows for the introduction of supplemental evidence, if such introduction is in the interests of justice.  The Board granted such a request in Cyanotech Corporation v. Board of Trustees of the University of Illinois, IPR2013-00401, Paper 41, allowing two supplemental documents to be added to the IPR.  Given the difficulty of meeting the “interests of justice” standard, we thought it worthwhile to discuss the rationale of this decision.

Pursuant to 37 C.F.R. § 42.123 (b), a motion to submit supplemental information must demonstrate why the information reasonably could not have been obtained earlier, and that consideration of the supplemental information would be in the interests of justice. Id. Patent Owner, in seeking to introduce supplemental evidence, argued that the information at issue could not have been reasonably obtained earlier because the documents at issue were part of a litigation production consisting of over 100,000 pages. Id at 3.

Petitioner argued that the documents had been produced several months before the Patent Owner Response was due and that Patent Owner’s failure to submit them with the Response was mere attorney negligence. Id. Petitioner further argued that it would suffer prejudice because it would not have time to prepare for the deposition of Patent Owner’s witness, to locate a rebuttal expert, and to prepare its reply.

Given the extensive nature of the document production, the fact that the supplemental information was limited and bore directly on Petitioner’s statements in the IPR, and that any prejudice to the Petitioner was negligible, the motion to submit supplemental information was granted. Id.

Aug 12

First Petition for Post Grant Review Filed

LoomAt long last, a Petitioner has dipped its toes in the Post-Grant Review waters, filing the first ever PGR petition in LaRose Industries, LLC v. Choon’s Design Inc., PGR2014-00008.  The popular “Rainbow Loom” is the commercial embodiment of the patent claims at issue.

The patent at issue is, of course, a “first to file,” post-AIA patent, having been filed after March 13, 2013 (US Patent No. 8,684,420).  Jurisdictional basis for a Post-Grant Review may, however, be at issue, as the patent claims priority to numerous earlier-filed patents.  Petitioner argues, however, that the claims are based on new subject matter that was added in the post-AIA application.  See, e.g., Petition at 5, 23-36.

The bases for the petition include 35 USC §§ 102, 103, and 112.  The first ground discussed in the petition is a challenge under §112 that the challenged claims lack written description support in the specification (Petition at 45), are indefinite (Id. at 46-47), and are not enabled (Id. at 48).  Also particular to Post Grant Review procedures is the assertion in the Petition that the challenged claims are anticipated by the commercial embodiment of a competitive product.  Inter Partes Review procedures are, of course, limited to 102 and 103 grounds based on patents and printed publications.  Here, the actual sale of a product is serving as the basis for the 102 challenge – proper subject matter for a PGR.

Another new era in patent litigation has begun and we look forward to watching the developments in this and future PGR proceedings.

Aug 11

Patent Expiry During IPR Means Phillips, not BRI, Applies

Reference booksWe previously discussed one Patent Owner’s attempt to avoid the “broadest reasonable interpretation” (BRI) claim construction standard by disclaiming the remainder of the patent-at-issue’s term.  While some uncertainty about that technique remains, what is clear is that when a patent in an IPR expires during the pendency of the proceeding, the limitations of that patent’s claims are construed pursuant to the Phillips claim construction standard.  That is, claim terms are given their ordinary and customary meaning as understood by a person of ordinary skill in the art. In Square, Inc. v. Carl Cooper (IPR 2014-00157), an example of this principle is seen in action, as the patent at issue (U.S. Pat. No. 7,828,207) was set to expire prior to the Board issuing the final written decision.

Both parties to the proceeding filed a Joint Stipulation stating that the broadest reasonable interpretation of the claims did not apply given this pending expiration. Previously, the Board had construed the claim terms according to their broadest reasonable interpretation, as is the case with all IPR proceedings of unexpired patents.  In the end, though, it was a distinction without a difference because, despite this shift from BRI to Phillips, the Board found that no changes to previous claim constructions were necessary.

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