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.

Aug 08

Anticipation Grounds Denied By Board When Elements of Claim Not in Single Embodiment

blank mind map or flowchart on blackboardWith increasing frequency, challenge grounds in IPR Petitions are being denied because Petitioners are attempting to shortcut the proper anticipation analysis by combining teachings from various, distinct embodiments in the prior art, instead of indicating how the prior art discloses, in a single embodiment, each and every limitation of a challenged claim.  See, e.g., Panasonic Corp., et al. v. Optical Devices, LLC, IPR2014-00302, Paper 9 at 13-14 and Symnatec Corp. v. RPost Comunications Ltd., IPR2014-00357, Paper 14 at 20.

When a prior art reference discloses multiple, distinct embodiments, combining teachings from those distinct embodiments requires an obviousness analysis, including a demonstration of why one of ordinary skill would be motivated to combine those disparate teachings.  In contrast, “[f]or anticipation, it is not enough that the prior art reference discloses multiple, distinct teachings that the ordinary artisan might somehow combine to achieve the claimed invention.” Symantec, at 20 (citing In re Arkley, 455 F.2d 586, 587-88 (CCPA 1972); Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008)).  The lure of a 102 argument where 103 is more appropriate can, apparently, be too strong to pass up on occasion.

Aug 07

35 U.S.C. § 315(b) Time-Bar Period Starts Running with 1st Complaint

hourglass35 U.S.C. § 315(b) requires that an IPR is barred if the petition is filed more than a year after the date which petitioner is served with a complaint alleging infringement of the patent.  In Apple Inc. v. Vernetx, Inc. and Science Application International Corporation (Case IPR 2013-00393), the Board addressed the statutory interpretation of the term “complaint” and clarified several issues relating to the effect that subsequent infringement complaints have on earlier-served complaints.

Petitioner was served with a complaint relating to the Patent-at-issue on two occasions — the earlier complaint was served more than one year before Petitioner filed the IPR petition; the latter, less than one year.  The Board denied institution because the petition was not timely filed under 35 U.S.C. § 315(b), finding that service of the first complaint started the one-year time bar.

In a follow-up decision on a Motion for Rehearing, the Board made several key points in dispatching Petitioner’s arguments:

(1)    Congressional intent does not trump the plain meaning of the statute.  Congress made a specific provision (35 U.S.C. § 315(c)) which allowed requests for joinder to be exempted from the time-bar limitation of 35 U.S.C. § 315(b).  If Congress intended that § 315(b) time-bar not apply to infringement litigation unless it’s concurrent with the filing of the petition (as Patent Challenger maintained was the case), then it would have explicitly stated so in a similar provision to 35 U.S.C. § 315(c).  But, because Congress did not insert such a provision, legislative intent clearly points toward the opposition of Petitioner’s assertion.

(2)    Adopting Petitioner’s reading of the statute would lead to undesirable results.  If the statute is read to mean that the time-bar does not apply to infringement litigation unless it’s concurrent with the filing of the petition, then a defendant could lose a patent infringement suit and then file for IPR challenging the same patent after the one year time-bar expires.  This is clearly not a positive result.

(3)    The § 315(b) time-bar applies to any patent issued before, on, or after the enactment of the AIA.  The language of the statute is clear on this subject, contrary to Petitioner’s assertion that the time-bar should only apply to actions after the enactment of the AIA.

In short, the § 315(b) time-bar applies to first-served complaint alleging patent infringement.

Aug 06

Board Allows New Reexamination Filing to Amend Claims at Issue in Concurrent IPR

New startIt is well settled under the AIA that it’s possible to have concurrent proceedings during an IPR.  In Game Show Network, LLC and Worldwinner.com, Inc. v. John H. Stephenson (IPR2013-00289), the Board addressed a related issue in which Patent Owner was pursuing a concurrent ex parte reexamination during an ongoing IPR proceeding.

Patent Challenger filed a motion to terminate or stay ex parte reexamination of U.S. Pat. No. 6,174,237.  In the reexamination, Patent Owner sought to amend the claims at issue in the instant IPR proceeding.

Patent Challenger had two main arguments in favor of termination.  First, Patent Challenger argued that allowing pursuit of claim amendments in the ex parte reexamination is inconsistent with Congressional intent of the AIA.  Patent Challenger asserted that by pursuing claim amendments in the reexamination rather than in the IPR proceeding, Patent Owner was dodging Congress’s intent to have IPR proceedings be a substitute for litigation in which the parties’ entire patentability dispute could be resolved in a single proceeding.  Patent Challenger also alleged that allowing Patent Owner to amend claims in the concurrent ex parte reexamination would generate inconsistent claim analyses and increase inefficiency, as further litigation and/or more IPR proceedings would result if Patent Owner’s substitute claims were deemed allowable after reexamination.

Secondly, Patent Challenger argued that Patent Owner was only pursuing minor claim amendments and that the proper avenue for doing so was in an IPR proceeding, not in an ex parte reexamination, where major claim amendments are pursued.

Patent Owner argued that it would be greatly prejudiced if the ex parte reexamination was terminated in light of the fact that the deadline to amend claims in the instant IPR had already passed.

The Board agreed with Patent Owner and made three key points:

(1)    Patent Owner was not attempting to thwart Congressional intent.  The AIA has no express language barring ex parte reexamination to amend claims at issue in a concurrent IPR.  Further, it’s clear that the AIA allows the Director to decide if and how concurrent matters proceed during an IPR.

(2)    Board precedent states that strategies outside of IPR are available for amending claims.  Though an ex parte reexamination typically involves major claim amendments, this fact doesn’t restrict any other amendments to claims at issue in an IPR to be made exclusively within said IPR proceeding.

(3)    There is no issue of generating inefficiency, as the Director had not yet acted on Patent Owner’s request for amending claims.

Therefore, the Board ultimately denied Patent Challenger’s motion to terminate the concurrent ex parte reexamination.

Aug 05

Preserving a Complete (and Confidential) Record for Appeal

37 CFR §42.56 

Expungement of confidential information: After denial of a petition to institute a trial or after final judgment in a trial, a party may file a motion to expunge confidential information from the record.

Now that the first wave of Final Decisions have issued from the PTAB, the question has arisen regarding what to do with sealed documents in an IPR record while the decision is appealed.  Pursuant to Patent Office Trial Practice Guide, Rule 42.56, “confidential information that is subject to a protective order ordinarily would become public…45 days after final judgment in a trial.”  That practice runs counter, of course, to the need for a complete record for purposes of appeal.

In Illimina v. Columbia University, IPR2012-00006, the parties filed a Joint Motion asking that the record in the proceeding be preserved pending the outcome of a possible appeal “including preservation of all sealed documents in non-public form.” The Joint Motion alternatively asked that the sealed files be expunged from the record pursuant to 37 C.F.R. § 42.56. The Board decided under the present circumstances, it is reasonable to maintain the record undisturbed pending outcome of any appeal. At the conclusion of any appeal proceeding however, if the parties do not contact the Board, then the information filed under seal will be made public in due course. Decision at 3.

Aug 01

Getting Around the Broadest Reasonable Interpretation Standard

Reference booksAmong the advantages to inter partes review proceedings, for petitioners, is the ability to have the limitations of subject patent claims evaluated pursuant to a “broadest reasonable interpretation” standard (“BRI”), instead of the Phillips standard that is required in district court litigation. In some instances, it can be easier to render claims unpatentable using this broader claim construction standard.  To get around that broader standard, however, Patent Owners are trying creative ways to get to the potentially more narrow Phillips standard.

To that end, in Amkor Technology, Inc. v. Tessera, Inc., IPR2013-00242, Patent Owner filed a terminal disclaimer of the remaining term of the challenged patent and then argued that the claims of the now-expired patent should be not be evaluated under BRI, but under Phillips.  The second step of Patent Owner’s strategy was to then request authorization to file a motion to terminate the proceeding on the basis that the Board applied the broadest possible interpretation standard in the decision to institute this inter partes review. Id. Petitioner opposed the request arguing that Patent Owner improperly delayed until all substantive briefing was completed. Id. at 3.

The Board denied Patent Owner’s request, finding that Patent Owner did not move quickly enough to have the issue considered.  Because Patent Owner waited until all the substantive briefing in the proceeding had concluded before filing the terminal disclaimer, it was not feasible to change the standard by which the challenged claims would be interpreted. As such, the terminal disclaimer was ordered to be held in abeyance, pending the resolution of the IPR.

Importantly, the Board did not hold that this technique would not work under different circumstances.  We await the first opportunity for a Patent Owner to file a terminal disclaimer early in the proceeding so that the Board’s objections in this case are overcome.

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