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.

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, 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.

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