In Emerachem Holdings, LLC v. Volkswagen Group of America, Inc., the Federal Circuit made clear that “catch-all” phrases in a Petition for IPR and/or a Board’s Institution Decision are insufficient to put a patent owner on notice of the specific grounds alleged for unpatentability.
In this case, the Board relied upon the “Stiles” reference as disclosing one of the elements of challenged claims 3, 16 and 20, even though the Petition did not specifically rely upon Stiles for those claims (instead applying Stiles to other challenged claims). Similarly, the Board’s Institution Decision did not specifically identify Stiles as part of the ground for unpatentability of claims 3, 16 and 20. Petitioner argued that a broad statement in the Petition that “[c]laims 1-14 and 16-20 are obvious under 35 U.S.C. §103(a) over the combination of Campbell [‘558] and either Hirota or Saito, in view of Stiles” was sufficient to put the Patent Owner on notice. The Petitioner also argued – as did the PTO, which intervened to defend the Board’s decision – that a similar statement in the Institution Decision was sufficient notice. The Federal Circuit rejected those arguments, finding that such general statements, particularly in the light of very detailed claim charts that failed to identify Stiles for claims 3, 16 and 20, do not provide sufficient notice. Therefore, the Patent Owner’s right to notice and an opportunity to respond under the America Invents Act were violated. The Federal Circuit reversed and remanded.
The Federal Circuit also reaffirmed the need for corroboration when relying upon the testimony of an alleged inventor. Here, the inventors of the challenged patent each submitted declarations to the effect that they were the sole inventors of the subject matter of an asserted prior art reference on which they were listed inventors along with two other inventors. Therefore, argued the Patent Owner, the alleged prior art did not qualify under 35 U.S.C. §102(e) because it was not “by another.” The inventors’ declarations, though, were uncorroborated by any other testimony or documents. The Federal Circuit reaffirmed that, in many cases, the testimony of an inventor must be corroborated, and that the sufficiency of the corroboration will be determined under the totality of the circumstances.