Dec 16

Rationale from Denied Ground Used By PTAB In Final Written Decision

13329201_s (1)Lost a challenge ground in the Board’s Decision to Institute? The Board has given some hope that such denied grounds may still of use in an IPR proceeding in McClinton Energy Group, LLC v. Magnum Oil Tools International, Ltd., IPR2013-00231, involving US Pat. No. 8,079,413. In this decision on a motion for rehearing, the Board affirmed the propriety of its use of rationale from a denied ground from the Petition to support a final decision of unpatentability.

Earlier in the proceeding, the Board instituted inter partes review of the challenged claims based on six grounds of unpatentability, each of which was based on three references (References A, B, and C). The Petition also contained numerous grounds of unpatentability based in part on a fourth reference (Reference D), all of which were denied by the Board. Decision at 3-4. In the Petition, to support an argument that one of skill in the art would combine references A, B, and C, Petitioner made reference to the rationale for combining of references from denied-grounds relying on Reference D. The Board then relied upon this rationale in determining that all challenge grounds were unpatentable.

In the Motion for Rehearing, Patent Owner argued that by incorporating this argument from a denied ground, the Board was including a new ground of unpatentability in the final written decision and Patent Owner was therefore denied due process. Id. at 4.  The Board disagreed, pointing out that Patent Owner addressed the rationale at issue in the Patent Owner Response. That the same rationale to combined was used in both a sustained challenge ground and a denied challenge ground was not enough to change the thrust of the grounds of unpatentability. Accordingly, the fact that the Board adopted the rationale to combine references presented in a denied-ground of the petition in a granted-ground in final written decision does not create a new ground of unpatentability.  Id. at 5.

Dec 11

IPR Obviousness Challenge of Design Patent Denied

7981714_sThrough two years of inter partes review practice, only 8 petitions were filed that were directed to design patents (out of 1773 total petitions). Given this limited number of petitions, lessons are going to be difficult to learn regarding the treatment of design patents in IPR proceedings. As such, we take a look at a failed petition, filed in Dorman Products v. Paccar, IPR2014-00555, wherein the Board had to consider the differences between functionality, pursuant to 35 USC § 171 and obviousness, pursuant to 35 USC § 103.

In determining whether a design patent claim is obvious, the parties agreed that the focus should be on the visual impression of the claimed design, as a whole. Order at 4. That is where the parties agreement, however, ended. In the Petition, Petitioner argued that certain functional elements of the design should not be considered part of the design patent claim. Patent Owner disagreed, arguing that, whether or not the elements are functional, they must still be considered as part of the visual impression created by the design as a whole. Id. 

In explaining its rational, the Board stated an ornamental design for an article of manufacture may not be patented if the design is “primarily functional” rather than “primarily ornamental.”  Order at 4. Further, of course, a design patent must not be obvious, pursuant to §103. Id. The inquiry into functionality, however, is separate and distinct from the obviousness analysis. Id. at 5. As such, the allegedly functional elements of a design patent must be considered in an obviousness analysis of the visual impression created by the patented design as a whole. Id.

After deciding that the “functional” characteristics issue, the Board turned to the obviousness analysis, citing Apple, Inc. v. Samsung Elecs. Co., 678 F.3d 1314, 1329 (Fed. Cir. 2012), for the proposition that, in an obviousness challenge to a design patent, the ultimate inquiry is “whether the claimed design would have been obvious to a designer of ordinary skill who designs articles of the type involved.” Order at 6.

Primarily because the functional characteristics of the design claim were considered in the obviousness analysis, the Board concluded that Petitioner failed to demonstrate a reasonable likelihood that a designer of ordinary skill would have viewed the primary prior art reference to give the same visual impression as the challenged design patent. Id. at 21. As such, the Petition was denied.

Dec 08

IPR Patent Owner Succeeds in Antedating Key Prior Art

4928629_sA witness credibility battle erupted in Dynamic Drinkware LLC v. National Graphics, Inc., IPR2013-00131, where the Board found that Patent Owner antedated a key prior art reference…despite the fact that the inventor testified on behalf of Petitioner. To uphold its burden of proving an earlier invention, Patent Owner relied on testimony from two fact witnesses who explained the steps undertaken by Patent Owner in conceiving and reducing to practice the claimed invention. Order at 7. In rebuttal, Petitioner relied on testimony from the inventor himself. Id. The inventor testified that while working for Patent Owner and developing the product, “None of the products [were produced]…in a way that was consistent with the claims of the ‘196 patent.” Id. at 10. The inventor further testified his notebook entry “confirms that we still had a long way to go [for commercialization].”

The Board sided with Patent Owner, finding that “[t]here is no requirement that the invention, when tested, be in a commercially satisfactory stage of development.” Steinberg v. Seitz, 517 F.2d 1359, 1363 (Fed. Cir. 1975) “The fact that further refinements of the invention were made is not relevant.” Farrand Optical Co. v. United States, 325 F.2d 328, 333 (2d Cir.1963). Order at 13.

Thus, the testimony from the inventor himself did not persuade the Board that the invention was not reduced to practice prior to the critical date of a key prior art reference. Id. at 17. The Board found Patent Owner’s witnesses properly antedated the reference and, without that prior art, the proposed challenge grounds from the Petition failed.

Dec 04

Pyrrhic Victory: IPR Petition Denied Because Claims Indefinite

14253925_sPatent Owner won a Pyrrhic victory in Facebook v. TLI Communications, IPR2014-00566, wherein the Board denied the Petition, but for a reason that calls into question the future viability of the patent-in-suit. Namely, the Board found that it could not construe the means-plus-function claim limitation at issue and, as such, the claim is indefinite and not amenable to construction.

More specifically, the Board sought to construe “means for allocating classification information” from the patent-at-issue. Order at 7. Petitioner stated that the specification did not disclose any algorithm for performing the allocating function. Id. at 10. Of course, a lack of sufficient disclosure of structure, pursuant to 35 U.S.C. § 112, ¶ 6, renders a claim indefinite, and thus not amendable to construction. Id. 13. The Board quoted the Federal Circuit on this point: “If a claim is indefinite, the claim, by definition, cannot be construed.” Enzo Biochem, Inc. v. Applera Corp., 599 F.3d 1325, 1332 (Fed. Cir. 2010). Because the claims were not amenable to construction, the Board was unable to conclude that there is a reasonable likelihood that Petitioner would prevail in its challenge of claim and dependent claims therefrom, and Institution was denied. Paper 14 at 18.  As such, Patent Owner’s patent survives…for now.

Dec 03

Inter Partes Review – A Fair and Efficient Litigation Alternative

IPRWith special thanks to my co-author, Laura Sheridan of Google, the linked article takes a detailed look at the first two years of inter partes review practice before the Patent Trial and Appeal Board and seeks to provide insights into some of the most critical areas of the proceedings. Like all change, the implementation of IPR has caused considerable commentary from both supporters and critics. There can be no denying, however, the overwhelming popularity of the proceedings as an alternative to litigation. As the article points out, while the proceedings are not perfect, the statistics and facts underlying IPRs makes clear that they are, at least, fair.

The article is re-published with permission from the Association of Corporate Counsel (http://www.acc.com).

Dec 02

Third IPR Petition Directed to Same Patent Denied under 35 U.S.C. § 325(d)

17934850_sOne of the advantages for Petitioners of inter partes review practice, to date, is the PTAB’s willingness to reconsider prior decisions by the Patent Office relating to patentability. Previous Office determinations of patentability in examination, ex parte reexamination, and inter partes reexamination are often given little deference in IPR proceedings. But even the Board can only take so much. In Medtronic, Inc. v. Nuvasive, Inc., IPR2014-00487, Petitioner failed in its third bite at the apple for a patent that was previously challenged by IPR petition. Order at 5.

According to Patent Owner, the Petition was “essentially a duplicate of the previously denied petitions,” and should be denied pursuant to 35 U.S.C. § 325(d). Id. Petitioner argued that the denial of the old Petition had no bearing on this case. Id. at 6. The revised Petition directly responded to a “noted deficiency,” and new evidence and argument were provided to cure that deficiency.

The Board agreed with Patent Owner, beginning its analysis by citing to § 325(d): “[i]n determining whether to institute or order a proceeding under this chapter, chapter 30, or chapter 31, 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.” 35 U.S.C. § 325(d). Id.

In view of the fact that Petitioner did not provide any persuasive reasoning as to why an inter partes review should be instituted over “the same or substantially the same prior art or arguments” that were presented in the old Petitions, the Petition was denied. Id. at 7.

Dec 01

Patent Public Advisory Committee 2014 Annual Report

8457034_sThe Patent Public Advisory Committee issued its Annual Report regarding fiscal year 2014. The PPAC Report contains a number of interesting points, but our review, of course, will focus on the PTAB and post grant proceedings. The PPAC’s review of post grant proceedings started off with a review of numerous key statistics, including:

  • The Board comprised 214 judges at the end of FY 2014;
  • Of the petitions filed, 71.6% were directed to electrical/computer software patents, 15.6% were mechanical patents, 6.8% were chemical, 5.6% were biotech/pharma, and 0.4% were design patents;
  • 2,082 total petitions have been filed since the inception of the AIA, with a peak of 190 petitions filed in June of 2014;
  • The Board has issued final written decisions in 129 IPR proceedings and 13 CBM proceedings;
  • The 1,494 Petitions filed in FY 2014 made the Board the second busiest patent jurisdiction behind only the Eastern District of Texas (1,511 Complaints) and just ahead of the District of Delaware (1,335 Complaints); and
  • For ex parte reexamination buffs, the Board affirmed or affirmed-in-part 67% of appeals, reversed 30%, and remanded or dismissed 3%.

Another interesting aspect of the PPAC Report was its recommendations to the PTO. First, the PPAC recommended continued vigilance in hiring new judges or otherwise handling the increased AIA workflow. Second, the PPAC suggested that the Board not be reluctant to exceed the one-year, statutory timeline for post grant proceedings. And, third, the PPAC recommend that the USPTO become more flexible in claim amendment practice to make them more available to patent owners.

The PPAC was formed as part of the American Inventors Protection Act of 1999 to advise the Director of the PTO on the management of patent operations. The Committee reviews the policies, goals, performance, budget, and user fees of the patent operations and advises the Director on these matters.

Nov 26

Board Denies Motion to Stay IPR Despite 3 Other Co-Pending Challenges

18363437_sBuried under the weight of four different challenges to its patent, Patent Owner sought relief via a motion to stay one of the pending IPR proceedings. But, in Rackspace US, Inc. and Rackspace Hosting, Inc. v. PersonalWeb Technologies, LLC & Level 3 Communications, IPR2014-00057, involving US Patent No. 5,978,791, the Board declined to exercise its authority (under 35 U.S.C. § 315(d)) to manage multiple proceedings at the PTO involving the same patent and denied Patent Owner’s Motion to Stay.

The ‘791 patent was involved in four separate proceedings at the Patent Office (the instant IPR, IPR2013-00082, a reexamination, and IPR2014-00702).  All four proceedings relied on the same prior art. Several claims of the ‘791 patent were found to be unpatentable in the ‘082 proceeding, that was appealed the final decision to the CAFC.  Additionally, the same claim constructions were adopting in both proceedings.

However, the Board felt constrained in view of the requirement the proceeding be completed within one year, unless good cause was shown. Here, good cause was not sown because there were a few key differences between the instant proceeding and the ‘082 proceeding, including: (1) The ‘791 claim challenged in the instant proceeding was not challenged in the ‘082 proceeding; (2) Patent Owner acknowledged (and the Board agreed) that new witnesses and testimony were present in the instant proceeding; and (3) The instant proceeding relied on different disclosures of the prior art reference which was in common with the ‘082 proceeding.

Based on these factors, the Board found that granting the motion to stay would interfere with its statutory mandate to seek a just, speedy, and inexpensive resolution to the proceeding.

Nov 25

Proposed Claims in IPR Motions to Amend Can Now Be Placed in Appendix

iStock_000017878764XSmallThe PTAB recently sent out an email alert, directing practitioners to its order providing guidance on Motions to Amend in Corning Optical Comm. RF, LLC v. PPC Broadband, Inc., IPR2014-00441, Paper 19. The Order stemmed from the required “conferral” with the Board regarding a motion to amend, 37 CFR § 42.121(a), and is surely another response from the Board in response to criticism that only one Motion to Amend has been granted to date.

In general, the Board set forth, again, a listing of all the many requirements of a Motion to Amend. Those requirements are reviewed below. What is unique about this Order, and surely the reason it was set forth separately in the PTO alert, is the fact that the Board authorized Patent Owner to place its proposed substitute claims in an appendix, such that it did not count against the 15-page limit for motions to amend. This has been a sore subject with Patent Owners who were otherwise forced to cram all the requirements of the Idle Free decision, and its progeny, along with a listing of the proposed claims, within the 15-page motion to amend. Assuming this is a trend by the Board, this will be welcome to Patent Owners who are have been clambering for a more fair opportunity to address all the many requirements of these motions.

By way of review, we set forth the other requirements of a Motion to Amend that were reiterated in the Order:

  • Proposed substitute claim should be responsive to the ground of unpatentability applicable to the original claim for which it is a substitute;
  • A claim listing is required, including each proposed substitute claim (with any claim having a changed scope included);
  • The proposed substitute claim must be traceable back to the original claim it is intended to replace;
  • If more than one substitute claim is required for a particular claim, the motion should articulate a special circumstance to justify the request;
  • The motion must show clearly the changes of the proposed substitute claim vis-a-vis the original claim (i.e., brackets for deleted text; underlining for inserted text);
  • Patentability must be shown, in general, not merely over the references applied against the original claims;
  • Written description support must be shown for each proposed substitute claim (citing to the original disclosure and showing support for the entire claim, including demonstrating disclosure in any intervening applications);
  • If a new term is proposed, the meaning of which reasonably can be anticipated as subject to dispute, the Patent Owner must provide a proposed claim construction (citation to “plain and ordinary meaning” is viewed as unhelpful – what that meaning is must be provided);
  • Sufficient underlying facts should be provided regarding the proposed added feature, including whether it was previously known anywhere, in whatever setting, and whether it was known in combination with any other elements of the claim (if known, the motion must show why it was not obvious);
  • Patent Owner must reveal what it knows about the new feature (i.e., including a discussion of the ordinary skill in the art, with a particular focus on the feature added, such as a specific discussion about the technical knowledge pertaining to the added feature, whether there are textbooks or conventional practices relating to the feature, and what basic skill set would be possessed by one of skill); and
  • Make a showing regarding the co-pendency and common-inventor requirements of 35 USC § 120 with respect to each ancestral application in the chain of priority applications.

Nov 24

Draft IEEE Standard Not a Printed Publication in IPR

18456950_sWhether the art presented in an inter partes review petition is a printed publication has arisen more frequently as Petitioners push the envelope to take advantage of the benefits of IPR proceedings. To that end, the PTAB was given the opportunity to decide the issue of whether a draft IEEE standard could be considered a printed publication in Samsung Elec. Co. v. Rembrandt Wireless Techs., IPR2014-00514. Finding that the placement of the draft standard on a “Working Group” server was akin to placing the file on a server to facilitate peer review, which the Federal Circuit has held is not publication, the Board denied the Petition.

To qualify as a printed publication, a document “must have been sufficiently accessible to the public interested in the art.” In re Lister, 583 F.3d 1307, 1311 (Fed. Cir. 2009). Order at 6-7. In this case, Petitioner presented the draft standard, along with the declaration of an editor of the standard. That editor testified that the standard was available on a Working Group server and that announcements were sent when drafts became available. Further, there were no restrictions on who could attend the Working Group meetings, or could provide an email address to be included in the Working Group. Id. at 5.

Patent Owner argued that posting the draft standard to the Working Group server did not make it a printed publication. Further, the Petition did not set forth any evidence regarding the availability of the document to individuals other than members of the group. Id. at 7. There was also no evidence that the group’s meetings were advertised or even announced to the public. Id. at 7.

The Board found that the storage of the prior art was similar to the placement of a file on a server to facilitate peer review in preparation for later publication, which the Federal Circuit has found does not constitute public accessibility. Id. at 8. SRI Int’l, Inc. v. Internet Sec. Sys., Inc., 511 F.3d 1186, 1194 (Fed. Cir. 2008). Thus, the prior art was determined to not be a printed publication. Because the challenged grounds each relied on this disqualified art, the Petition was denied. Id. at 9, 10.

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