Eleventh Inter Partes Review Trial Instituted

The Patent Owner winning streak, for repelling inter partes review challenges, was halted at just one in view of the Board’s institution of an IPR trial in the proceeding styled as Synopsys, Inc. v. Mentor Graphics Corp., (IPR2012-00042), involving US Patent No. 6,240,376. The Board instituted an inter partes review trial with regard to 12 of the 29 proposed claims, using one (anticipation) of the 11 proposed grounds. This record 41 page order is loaded with aspects of IPR practice that are worth noting.

The subject matter of the ‘376 patent claims is the simulation and prototyping of integrated circuits. The Board started its analysis at a logical starting point – claim construction. At threshold, the Board made a point of emphasizing that no claim construction is necessary for terms if one of skill in the art would recognize the ordinary and customary meaning of those terms.  Citing Biotec Biologische v. Biocorp, Inc., 249 F.3d 1341, 1349 (Fed. Cir. 2001) (finding no error in non-construction of “melting”); Mentor H/S, Inc. v. Med. Device Alliance, Inc., 244 F.3d 1365, 1380 (Fed. Cir. 2001). The Board found that many terms in the challenged claims did not require construction for this reason.

Other terms, however, required construction, including “instrumentation signal,” “gate-level netlist,” “gate-level design,” and “sensitivity list.” To come to its opinion regarding claim scope, the Board relied upon two claim construction principles that are worth noting. First, regarding the first three of the above-listed terms, the Board noted that the terms were not explicitly defined in the specification, but found that the specification (including the examples) did contain useful context that would help define the terms. Thus, using the specification as a claim construction guide, the Board synthesized the various relevant specification excerpts to develop claim constructions of the relevant terms. Second, in defining “sensitivity list,” the Board determined that its construction was informed by certain dictionary definitions relevant to that limitation, citing to both an online definition and an IEEE reference.

Using these defined terms, the Board instituted an inter partes review trial on 12 of the 29 proposed claims, using one of the 11 proposed grounds.

Turning to its decision to institute an IPR trial, the Board first considered Patent Owner’s argument that the petition was statutorily-barred in view of 35 USC §315(b). Per that section of the Patent Act, an inter partes review may not be instituted if the petition was filed more than one year after the service of a federal court complaint alleging infringement of the subject patent. Here, the Patent Owner served a complaint on a third party company over five years earlier. That third party had since become a subsidiary of Patent Challenger and, thus, per Patent Owner, the challenger and third party were in privy with one another, preventing the filing of the petition.  The Board disagreed with this argument, finding that Patent Challenger was not a privy of the third party at the time the third party was served with the federal court complaint. Further, no evidence was even submitted that showed privity between the parties at the time the petition was filed. While Patent Owner argued that the relevant time for the analysis is the date on which the IPR is instituted, the Board again disagreed.  Privity is measured as of the date of the filing of the petition.

Having cleared the statutory bar argument presented by Patent Owner, the Board proceeded to consider each of the 11 grounds of unpatentability set forth in the petition by Patent Challenger. In general, however, the Board based its denial of most proposed anticipation grounds on the all elements rule and denied all obviousness grounds in view of Patent Challenger’s failure to identify with particularity the basis for its obviousness argument. See, e.g., Order at 21 (“Petitioner asserts, in a single sentence, that [the prior art reference], by itself, renders claims 1-5, 8-10, 20-24, 28, 32, and 33 obvious under 35 U.S.C. §103….Petitioner does not explain the reasoning behind this assertion.”).

But, among the arguments submitted by Patent Challenger, was an unpatentability ground that was based on a prior art brochure. The interesting issue was whether the brochure was actually a printed publication because it did not include any indication of when it was created or whether it was publicly disseminated. Patent Challenger had asserted that it was published at least as early as July 9, 1996 because it was filed in an Invention Disclosure Statement on that date. But, Patent Owner responded that inclusion on an IDS was insufficient to provide proof of publication and the file history for the patent did not become public until the patent issued, on November 17, 1998. Based on these facts, the Board agreed with Patent Owner that the brochure was not a printed publication.  Patent Challenger had simply failed to adequately prove that the brochure was publicly-available during the relevant time frame.  Order at 36.

Lastly, it is worth noting that in another portion of the Board’s decision, it denied certain obviousness grounds because “[Patent Challenger] does not address why a person of skill in the art would have combined the two references.” Order at 34. This is yet another indication that it is essential to include expert testimony with any petition to ensure an adequate basis for any proposed unpatentability grounds.

In the end, the Board granted yet another IPR trial, but did so only after an exhaustive review of various challenges by both parties.  Most beneficial for future inter partes review participants is the fact that this analysis yields many insights into IPR practice that will inform later proceedings.

 

Fourth Inter Partes Review Trial Instituted

As pitchers and catchers start reporting for Spring Training, it is worth noting that the rookie Patent Trial and Appeal Board is batting 1.000 for patent challengers, having instituted the fourth inter partes review trial out of four decisions it has made.  In Idle Free Sys, Inc.. v. Bergstrom, Inc. (IPR2012-00027), the Board instituted an IPR trial with respect to all 23 claims that were asserted in the petition – a departure from the previous three trials, when most, but not all claims were made part of the proceeding (see, e.g., HERE).

The PTAB’s decision largely turned on claim construction issues, with the Board deciding that several arguments made by Patent Owner in its preliminary response were not persuasive – the terms of the patent were deemed broader in scope than the meaning advocated by the patent owner.  The decision does not contain any significant points of law, but for future reference, it is worthwhile considering a few of the claim construction canons that the Board relied upon in rejecting Patent Owner’s position and instituting this IPR trial.

At threshold, by way of brief factual background, the key limitation at issue related to the term “engine off,” relating to a vehicle engine.  Patent Owner argued that “engine off” could not be met by an engine that is merely stopped or not running, but requires that there be no associated electronics in the ignition system that are primed and ready to automatically start the engine upon detection of a condition.  In short, Patent Owner was arguing that the claim required the vehicle engine to be “completely off.”

Using the Specification to Limit a Claim

One of patent owners’ arguments relied upon the patent specification as support for its proffered claim construction.  The Board discarded this argument, however, because the specification was equally applicable to the broader definition (“off”) and more narrow definition (“completely off”).  To that end, the specification made “no distinction between shut down and completely shut down, and engine off and completely off.”  Order at 10.  Thus, without a specific disclosure that limited the term to the more narrow definition, therefore, the “broadest reasonable interpretation” applied.

Different Terms Have Different Meanings

The patent owner also argued that the “engine off” claim term must be limited to “completely off” because the claim also contained the limitation “engine not running.”  Per Patent Owner’s argument, therefore, “engine off” must not mean the same as “engine not running.”  The Board rejected this argument as well, pointing out that “the claim interpretation principle that different terms have different meanings is only an initial presumption that can be rebutted by evidence such as…how the terms have been used in the specification.”  Order at 10-11.  The Board then relied upon the above-referenced discussion of the specification to refute Patent Owner’s proposed interpretation.

Inherency

The PTAB’s Order was not entirely against Patent Owner, however, as the Board did reject certain of the grounds asserted by Patent Challenger.  In particular, the Board rejected Patent Challenger’s argument that certain art inherently disclosed “that when a vehicle has an engine and the engine is operating, the engine provides power to the air conditioning system.”  Order at 13.  Patent Challenger’s support for this argument was an expert declaration in which the expert stated that the above proposition “was well known in the art.”  The basis for the Board’s rejection of this argument was the fact that just because something is well known is not sufficient to establish inherency.  Inherency may not be established by probabilities or possibilities.

All Elements Rule

Lastly, the Board also rejected other grounds that sought to invalidate certain claims as anticipated because the asserted art failed to disclose all the elements of the challenged claims.  It is not surprising, but is reassuring, that the Board is undertaking a detailed review of the asserted art and not glossing over certain elements in a claim – a practice that is more common at the examination level at the Office.  Instead, the Board is studiously considering each claim limitation and confirming that the asserted prior art discloses such limitations.