23 for 24: PTAB Provides Guidance on Petition Drafting in Instituting 23rd Inter Partes Review Trial

Denso and Clarion were successful in getting half of the claims of a patent owned by Beacon Navigation into an inter partes review trial, in the case styled as Denso Corp. and Clarion Co. Ltd. v. Beacon Navigation GmbH, IPR2013-00026, involving US Patent No. 6,029,111. The Board granted the IPR trial for 14 of the 28 challenged claims based on 4 of the 8 references presented by the Patent Challenger. The remaining claims were not placed into the IPR trial, marking one of the relatively few decisions in which an IPR trial was only granted for some of the challenged claims. It is also an unusual case because the Patent Challenger only challenged the ‘111 patent on anticipation grounds, with no obviousness grounds at all.

The subject matter of the ‘111 patent describes a navigation system in which information from a GPS is used to obtain velocity vectors, which include speed and heading components, for propagating or “dead reckoning” the vehicle position from a previous position to a current position. The current position is calculated by adding displacements obtained from the GPS velocities to the previous position. GPS position data alone is not accurate enough for certain applications, but GPS velocities are much more accurate than the position data and can be sued to propagate a known solution forward and be more accurate over time then the GPS position solution.

The Board first noted that ordinary and customary meaning would be used for all claim terms because Patent Challenger did not provide any proposed constructions.  In so holding, the Board softly criticized the petition, pointing out that the Petition relied largely upon claim charts, but lacked sufficient discussion and explanation of the unpatentability arguments upon which Patent Challenger relied:

Relying on claim charts with little or no supporting discussion or explanation assumes that the anticipation contentions are self-evident from them.  That is usually not the case, especially where, as here, the technology is complex.  That is why our rules state: “The Board may exclude or give no weight to the evidence where a party has failed to state its relevance or to identify specific portions of the evidence that support the challenge.”  37 C.F.R. § 42.104(b)(5).

The Board’s comment certainly provides a caution for patent challengers, especially in complex technology areas.  While page limitations can be a concern, it is not advisable to simply present unpatentability contentions in claim chart format. Instead, the claim chart should be accompanied by detailed explanation of the arguments contained in the claim chart, including the positions taken by Patent Challenger’s expert.

Moving beyond the claim construction and drafting issues, the Board ultimately decided that some of the proposed anticipation grounds met the reasonable likelihood standard.  In this regard, the Board made several potentially noteworthy conclusions, indicating the types of arguments and evidence the Board may be willing to rely on in deciding anticipation challenge grounds. As to claim 1, the Board took note of a “well-known calculus/physics principle” that integrating velocity yields a position displacement. Order at 19. As to claim 2, the Board found that even though “east” and “north” displacements were not explicitly recited in the anticipating reference, they were inherently disclosed because a velocity vector can have any direction. As to claim 6, the Board cited to a declaration submitted by the Patent Challenger in determining that there was a reasonable likelihood of prevailing for that claim. Order at 20-21.

The Board continued to stress the importance of additional argument beyond claim charts by finding no reasonable likelihood of prevailing as to claim 1 under one particular reference, “in the absence of any analysis from Petitioners above and beyond what is set forth in the claim charts.” Order at 29. There was one instance, however, in which the Board conducted their own review of a translated foreign reference which was only mentioned in the petition in claim charts that generally referred to certain pages of the foreign reference without any explanation. Order at 42. The Board did find a reasonable likelihood of prevailing on some of the claims, but not all, based on the foreign reference.

In the end, the IPR trial was instituted for only half of the claims, using only half of the asserted references for those claims. Interestingly, the Board did not deny any grounds based on redundancy, but instead made specific findings for every ground for each reference as to whether all elements of the claim were disclosed in the reference. The Board actually granted four different grounds based on four different anticipating references for many of the claims which were put into the IPR trial.

Stay tuned….while the faulty petition may have been the cause of numerous grounds for unpatentability being denied, the Board noted in its decision that there are 18 pending district court litigation matters relating to the patent-at-issue.  Guidance from the Board may lead one or more of the other defendants to retry the denied grounds.