Endo Pharma Patent Survives IPR Trial

19179334_sAmneal Pharmaceuticals came up short in its bid to knock out numerous claims of Endo Pharmaceuticals’ US Patent No. 8,329,216 in a Final Written Decision issued on July 22, 2015, Amneal Pharm., LLC v. Endo Pharm. Inc., IPR2014-00360. The ‘216 patent relates to oral controlled release pharmaceutical formulations comprising oxymorphone and related methods for pain relief. A strong lesson learned in this case is that arguments based on inherency can be difficult and it is important to introduce sufficient evidence to demonstrate that a purported “inherent disclosure” necessarily is present in the prior art. Bare expert testimony is often insufficient.

At the outset of its analysis, the PTAB construed “controlled release” and “about” from the claims of the ‘216 patent. The Board adopted Petitioner’s proposed constructions: 1) controlled release = release no more than about 80% of their active pharmaceutical ingredients within 60 minutes (taken from specification); and 2) about = at least the standard statistical error.

Petitioner’s obviousness argument was largely based on the contention that the prior art inherently disclosed a dissolution profile that required “two or three peaks” of blood plasma levels of the active ingredient. The vast majority of the Board’s decision discussed whether Petitioner had sufficiently shown that the prior art necessarily disclosed the claimed dissolution profile. For example, with regard to one of the grounds for unpatentability, Patent Owner attacked this argument by citing to certain clinical studies, including one disclosed to the FDA, that showed that two or three peaks did not necessarily occur. Petitioner sought to rebut this argument by explaining that the data in that clinical study was not tested frequently enough to show multiple peaks, but there was insufficient evidence provided on this point.

The takeaway from this case is that an argument based on inherent disclosure can be fact intensive and requires strong evidence that the limitation necessarily is in the prior art. Often, an expert declaration is not sufficient – certainly not one that merely states conclusorily that the property is inherent. Testing, reference to studies, etc. is required to prove this type of argument.

Objective Basis for Inherency Argument Must Be Contained in IPR Petition

19179334_sA common strategic question in inter partes review proceedings is whether you should proceed on an anticipation ground, arguing that a specific limitation is inherently disclosed, or convert the ground into an obviousness ground, using an explicit disclosure in a secondary reference to demonstrate the unpatentability of a claim. The perils of going with an inherent anticipation argument, of course, include the additional burden of proving that a reference necessarily discloses the feature, even if it is not explicitly disclosed. As such, it is worthwhile considering Spansion Inc., Spansion LLC, and Spansion (Thailand) Ltd., v. Macronix International Co., Ltd., (IPR2014-01116; U.S. Pat. No. 6,522,360) wherein the Board rejected an inherency argument made by Petitioner.

The ‘360 patent relates to a circuit layout on a substrate of a semiconductor wafer that is suitable for reducing defects during a chemical mechanical polishing (CMP) process.  The process has several key paramenters, including having an average polishing pressure during the process. The substrate comprises a plurality of strips, and the circuit layout comprises two structures linked by said strips. Decision at 2-4.

Petitioner argued that a prior art reference inherently disclosed the claim limitation “at least two strips of second circuit structure located on said substrate of said semiconductor wafer, each of said two strips of second circuit structure respectively linking the front end and the rear end of said plurality of strips of said first circuit structure”.  Id. at 8.  The Board disagreed, finding that Petitioner did not sufficiently address the functional language of the claim limitation as inherently disclosed in the reference. Id. at 8-9.  Specifically, the Board found that Petitioner did not provide enough evidence that the prior art process would apply an average polishing pressure across the circuit grid arrangement of the reference.  The Board criticized Petitioner’s reliance on a bare opinion presented in expert testimony, which essentially recited verbatim the patentability analysis presented in the Petition.  In other words, rather than provide objective factual support for the inherency argument, Petitioner’s expert testimony essentially signed off the arguments set forth in the petition.  Accordingly, the Board rejected Patent Challenger’s inherency argument and denied the petition as to the ground which depended on inherent disclosure in the prior art.  Id. at 10.

Dell Ends Up With a Mixed Bag of Results in 2 IPR Petitions Filed Against Acceleron

Silver Servers Rack - Hosting ThemeIn two separate challenges of a single patent, Dell had lukewarm success with 23 claims being placed in an inter partes review trial, but three claims and multiple grounds also denied by the Board in Dell, Inc. v. Acceleron, LLC (IPR2013-00440 and IPR2013-00443), involving U.S. Pat. No. 6,948,021.

The ‘021 patent relates to a computer network device having components of CPU modules, a power module, and an Ethernet switch module which incorporates “hot-swappable” connectors. The hot-swappable connectors allow for more efficient and speedy repair of the device.

The first issue of interest in the Board’s decision came as part of the claim construction for “is a stand-alone computer.”  Petitioner sought to broaden the scope of that term, based on a claim differentiation argument, but the Board found no reason to deviate from the plain and ordinary meaning of the term.  ‘440 Order at 6.

Also of interest was Petitioner’s inherency argument relating to the limitation of claim 24 that required a limitation relating to filtering communications to limit collisions caused by communications traffic.  Petitioner argued that such filtering was inherent to Ethernet switches, and supplied a declaration that “simply reiterates this position.”  ‘440 Order at 12.  But the Board was not persuaded by this inherency argument.  The patent at issue teaches that ethernet switch modules perform the claimed filtering, not simply a switch.  Because Petitioner did not allege that a switch was the same as a switch module, the Petition failed to set forth a reasonable likelihood of anticipation of claim 24.

Of brief note from the Board’s obviousness analysis, in what is a growing trend, the Board made special mention of the fact that Petitioner articulated a reason for combining the references underlying its obviousness contentions.  That is, not only did Petitioner demonstrate that the combination met all limitations, it also “articulated a sufficient reason with a rational underpinning for combining the teachings…”  ‘440 Order at 15.

In sum, in the ‘440 proceeding, the Board found that 23 of the 26 challenged claims should be placed into an IPR trial.

Turning to the ‘443 proceeding, Patent Owner’s most critical arguments centered on the priority date for certain claims of the ‘021 patent.  To that end, Petitioner argued that certain claims were not entitled to the filing date of a related provisional application.  ‘443 Order at 7.  In its Preliminary Response, Patent Owner set forth the support from the provisional application for the challenged claims and the Board agreed – finding that the claims were properly supported and were, therefore, entitled to the provisional application filing date.

This finding had a ripple effect on the prior art relied upon by Petitioner.  For example, the Board then turned to a prior art reference, that similarly claimed priority to provisional applications.  Patent Owner argued that the reference was not entitled to the priority date of the provisional applications because the excerpts relied upon by Petitioner were not found in the provisional applications.  The Board agreed, finding it important that neither Petitioner, nor its expert, cited to the provisional applications.  Further, Petitioner did not even provide copies of the applications as exhibits.  ‘443 Order at 10.

In the end, Dell’s efforts resulted in a mixed bag – partial success in having 23 of 26 challenged claims entered into an IPR trial based on one petition, but all challenges rejected in the second petition.

60 for 65: Corning Succeeds On Three Additional IPR Petitions

Corning extended its winning streak in its challenges of patents owned by DSM IP Assets (DSM) in three related cases styled as Corning Inc. v. DSM IP Assets B.V. (IPR2013-00043, IPR2013-00044, and IPR2013-00047), involving U.S. Pat. Nos. 7,171,103; 6,961,508; and 6,438,306 respectively.

All three patents relate to optical fibers having multiple-layered, radiation-curable coatings as well as to the compositions of the radiation-curable coatings. The coatings act to confer “microbending resistance” and specifically, the ’103 and ‘508 patents are directed to coated optical fibers in which the coating provides “good microbending resistance” and “a high cure speed.” Further, the ‘306 patent is specifically directed to a coated optical fiber with a cured resin coating which does not restrict the mechanical properties of the optical fiber.

In all three cases, the Board began with a short claim construction analysis. In general, the Board either adopted Patent Challenger’s constructions, or deemed that claim construction was unnecessary at this stage, without providing any meaningful analysis supporting its decisions.

Then, the Board turned to an overview of the petition. In all three cases, Patent Challenger asserted that the subject matter in the challenged claims was only allowed during prosecution because many of the claim limitations were in the form of inherent properties not explicitly set forth in the prior art. To support this position, Patent Challenger relied on the expert testimony of two of its own scientists, one of which reproduced prior art compositions to test them for inherent properties, and the other of which vouched for the validity of testing.

Patent Owner objected to these inherency arguments, arguing that (a) Patent Challenger’s anticipation argument actually required multiple references to explain the testing being conducted, (b) the petition should be denied due to Patent Challenger basing its challenges on ex post facto testing, (c) a person of ordinary skill in the art would not have been motivated to combine the prior art references cited by Patent Challenger to produce the claimed invention, nor would they have had a reasonable expectation of success, and (d) in the cases involving the ‘508 and ‘306 patents, Patent Owner argued that Patent Challenger deviated from the prior art teaching in its formulations and testing, even in one case calling Patent Challenger’s methods “fatally flawed.”

Among the interesting aspects of the Board’s decision was its analysis of whether a particular prior art reference inherently possessed a material limitation of the challenged claims.  To that end, Patent Owner argued that Patent Challenger was relying on a combination of references in its anticipation challenge.  The Board disagreed, finding that Patent Challenger may rely on evidence extrinsic to the primary prior art reference to show that the primary reference inherently possesses a particular property, “so long as the extrinsic evidence establishes that the property is ‘necessarily present in the thing described int he reference, and that it would be so recognized by persons of ordinary skill.'” citing Continental Can Co. USA v. Monsanto Co.948 F.2d 1264, 1268 (Fed. Cir. 1991).  00043 Order at 12.

As in previous Corning decisions, the Board also declined to adopt Patent Owner’s argument that ex post facto testing cannot be used in an obviousness analysis.  Because Patent Challenger was not using the testing to provide the rationale for combining prior-art references to reach the claimed subject matter, the testing was proper evidence in the obviousness analysis.  See, e.g., 00043 Order at 18-19.

It is worth noting that this is an interesting decision for a reason related to the decision whether or not a Patent Owner should file a Preliminary Response to the Petition.  Momentum is certainly on the side of not filing such Preliminary Responses, given the overwhelming rate of Petition grants to date.  That is, given the low likelihood that such a response will be successful, there is little incentive to a Patent Owner to explain its positions early in the proceeding.  In this case, while the Board ultimately granted the IPR trial, Patent Owner was given a detailed exposition of the weaknesses in its arguments, as currently viewed by the Board.  This will give Patent Owner a detailed road map for expert testimony and argument in its formal response in an attempt to rebut the challenge grounds.

In summary, the Board granted the petition of Patent Challenger as to 18 of 18 challenged claims in the ‘103 patent, 22 of 22 challenged claims in the ‘508 patent, and 14 of 14 claims in the ‘306 patent based on obviousness and anticipation grounds, solely obviousness grounds, and solely anticipation grounds, respectively.

57 for 62: Four Related Corning Petitions Result in Inter Partes Review Trials

Corning continued its challenges to numerous patents assigned to DSM IP Assets (DSM) that are directed to coating compositions for optical fibers. Due to the similarity of their subject matter, this post covers decisions in four related matters, styled as Corning Inc. v. DSM IP Assets B.V., (IPR2013-00048, IPR2013-00049, IPR2013-00045, and IPR2013-00046), involving U.S. Pat. Nos. 6,298,189 (twice); 6,399,666; and 6,110,593.

The ‘189 patent, the ‘666 patent, and the ‘593 patent all relate to radiation curable coating compositions for optical fibers. More specifically, the patents describe optical glass fibers with two radiation-cured coatings. To create cable or ribbon assemblies, numerous coated optical fibers are bonded together in a matrix material. As part of the manufacturing process, the glass fiber surface must be accessible, a process known as “ribbon stripping.” All three patents are directed to a ribbon assembly having improved ribbon stripping capabilities.

The Board’s analysis in all four cases, began with a claim construction “analysis.”  Patent Challenger submitted proposed constructions for several claim terms, but the Board, without any analysis, merely agreed with Patent Owner that the terms being disputed need not be interpreted in a manner that departs from their ordinary and customary meanings for purposes of its decisions.

Then, the Board turned to an overview of the petition. In all cases, Patent Challenger asserted that the subject matter in the challenged claims was only initially allowed during prosecution because the claim limitations were, for the most part, in the form of inherent properties of the composition which were not explicitly disclosed in the prior art. To support this position, Patent Challenger relied on the expert testimony of two of its own scientists, one of which reproduced prior art compositions to test them for inherent properties, and the other of which vouched for the validity of testing.

In rebuttal to this testing, Patent Owner argued that Patent Challenger deviated from what is described in the references during reproduction and testing of products and further that Patent Challenger improperly relied on inherency principles and ex post facto testing.

The Board then moved on to analyze Patent Challenger’s numerous asserted grounds of unpatentability in all four cases. Of particular interest, given the testing evidence relied upon by Patent Challenger, was Patent Owner’s argument that the contentions rely upon ex post facto testing – not information that was known at the time of the invention or disclosed in the cited references. But, the Board rejected Patent Owner’s attempts to undercut Patent Challenger’s inherency arguments in several respects. For example, the Board pointed out that it is not a requirement that the inherent properties of the prior art be known at the time of the invention.  00048 Order at 16-17.  By contrast, unknown properties cannot be relied upon to provide a rationale for modifying or combining prior art to reach the claimed subject matter.  Id. at 17.  But, because Patent Challenger did not predicate its obviousness challenges on the latent properties – that is, Patent Challenger did not argue that those properties, themselves, provide the rationale for combining prior art references, Patent Owner’s rebuttal failed.  As such, the Board accepted the testing evidence.

In addition, Patent Owner argued that the anticipation argument made by Patent Challenger required the selection of base oligomers from several different examples in the prior art patent.  Per Patent Owner, therefore, the reference could not be anticipatory.  The Board disagreed, finding that “a reference is not disqualified as anticipatory simply because ‘one of ordinary skill in the art would be required to pick items from two lists of components in order to assemble the invention.'”).  See, e.g., 00048 Order at 12. As a backup to this finding, the Board went on to find that the reference at issue renders the claims obvious because it provides reason to combine the various examples.

The Board also commented on the use, by Patent Challenger’s expert, of a secondary reference as part of an anticipation argument.  Patent Owner had argued that the use of the secondary reference required that there could be no anticipation.  The Board disagreed, finding that the anticipation argument does not rely upon more than one reference simply because a second reference is discussed.  Instead, the second reference is used to support the expert’s testimony regarding the knowledge of a person having ordinary skill at the time of the invention.

In summary, the Board granted the petition of Patent Challenger as to 20 of 20 challenged claims in the ‘666 patent, 66 of 66 challenged claims in the ‘189 patent, and 9 of 9 challenged claims in the ‘593 patent based on extensive obviousness and anticipation grounds.

47 for 52: Expert Declaration Provides Support for Grant of Inter Partes Review Trial

Mobile phone and tablet with battery chargers in white backgroundExpert testimony played a key role in Motorola successfully forcing three challenged claims of a Mobile Scanning Technologies patent into an IPR trial, in a case styled Motorola Solutions, Inc. v. Mobile Scanning Technologies, Inc. (IPR2013-00093), involving US Patent No. 6,065,880.  Trial was instituted for all three challenged claims based on 5 out of 18 challenge grounds.  Notably, the ‘880 patent was previously involved in a reexamination proceeding, during which the claims at issue were amended.

The ‘880 patent describes an adapter electrically coupled to a PDA. The adapter includes a laser or other light source which emanates a light beam that can be modified into a digital signal to download information to a PDA equipped with a photo detector or used as a presentation pointer. Also, electronic components of the adapter can be integrally incorporated into the PDA, so as to eliminate the need for the adapter.  This single, embedded PDA design is the subject of the challenged claims.

At threshold, the Board addressed three preliminary matters raised by Patent Owner in its Preliminary Response.  First, the Board addressed a defense raised by Patent Owner that the Petition was barred in light of a previous settlement, wherein the Eastern District of Texas retained exclusive jurisdiction over any future action relating to the ‘880 patent.  This issue was addressed in a prior decision by the Board.  In general, the Board found that it was not the right venue to decide if the district court’s order was being complied with.  The requirements for an IPR petition were met, so it was appropriate to move forward.  Patent Owner was instructed to approach the district court to enforce any of that court’s orders.  Second, the Board addressed Patent Owner’s defense that the non-patent references cited in the Petition were not authenticated.  Also, discussed in the earlier order, the Board found that it “will determine the proper weight to accord to the various references at each stage of the proceeding.”  For purposes of this stage, an adequate evidentiary showing had been made.  Third, Patent Owner argued that the IPR is duplicative of the prior reexamination.  The Board held, however, that given that the ongoing reexamination was stayed, that issue was moot.

The Board then moved to a claim construction analysis of disputed terms “PDA” and “microcontroller.”  Turning first to the specification, the Board declined Patent Owner’s efforts to read a synchronization feature or a personal information manager into the definition of “PDA”, finding that the terms were not mentioned in the patent and Patent Owner pointed to no evidence in the prosecution history or other documentary evidence to limit the “PDA” claim term. Without citing evidence, Patent Owner stated that those skilled in the art would recognize that a “microcontroller” is a highly integrated system-on-a-chip and that the term “microcontroller” is not used interchangeably with the term “microprocessor” in the ‘880 patent. However, the specification used both terms and the Board held that there was no distinction between them for the purposes of the claims of the ‘880 patent. Unsurpisingly, given that Patent Owner was unsuccessful in arguing narrower claim constructions, the Board went on to grant trial on all challenged claims.

In finding a likelihood of anticipation of claim 18 by one of the references, the Board relied on the Petitioner’s expert declaration as evidence that components were necessary for a scanner to operate and were inherent in the reference’s disclosure of a bar code processor connected to a microprocessor. Order at 25. Later, the Board relied on evidence from the Petitioner’s expert declaration that an integrated scan engine must have a photo detector positioned to receive light reflected from the bar code an analog-to-digital converter to process the signal and that it was inherent in another reference. Order at 29. Further, the expert declaration was used to establish that the use of visible red lasers in scanners, and the use of a visible laser diode to emit a visible red beam, was well known by the mid-1990s. Order at 34-35. In short, Petitioner’s expert declaration provided significant ammunition to support the Board’s decision.

Patent Owner sought to dissuade the IPR trial by arguing that Petitioner’s sales of mobility products proved non-obviousness, but the Board rejected the argument because Patent Owner did not provide evidence concerning the size and product scope of the relevant market, the Petitioner’s market share, or evidence of a nexus between the Petitioner’s alleged sales and the claimed invention.

In the end, the Board granted trial on all three challenged claims, based on 5 challenge grounds.

45 for 50: Inherent Disclosure Plays Key Role in Grant of Inter Partes Review Trial

Optical fibersCorning was successful in challenging 24 of 34 claims of a DSM IP Assets (DSM) patent in a case styled as Corning Incorporated v. DSM IP Assets B.V. (IPR2013-00052), involving U.S. Pat. No. 7,276,543.  As previously discussed, this is an interesting case given that Corning and DSM have had a long standing business relationship, at least until this IPR battle erupted.  This is the first of 10 IPR petitions filed by Corning.

The ‘543 patent relates to radiation curable coating compositions for optical fibers. More specifically, the patent describes optical glass fibers with two radiation-cured coatings.

Board began by interpreting several claim limitations, from the challenged claims, including, “photoinitiator package,” “free radical photoinitiators,” “molecular extinction coefficient,” and “absorption peak” or “shoulder.” Patent Challenger proposed interpretations for all of the phrases, including taking the position that certain recitations from the claims refer to future intended uses of the subject compositions and do not, therefore, limit the claimed compositions.  Order at 5.  Patent Owner generally objected to the proposed constructions as being too narrow, without proposing its own counter-interpretations. Without analysis, the Board decided that Patent Challenger’s interpretations “do not appear unreasonable at this stage of the proceeding” and adopted all Patent Challenger’s interpretations.

The overall theme of Patent Challenger’s Petition was that the challenged claims were allowed during prosecution “simply because many of the limitations were in the form of inherent properties of the claimed composition not explicitly disclosed int he prior art.  Order at 6.  To fill those gaps in the prior art, Patent Challenger relied on the expert testimony of two of its own scientists to show that the properties were, in fact, inherent by virtue of experiments whereby the experts reproduced prior art compositions and tested their properties.

In an effort to defeat this expert-created evidence, Patent Owner argued that the test results were insufficient because they failed to disclose certain significant underlying facts about the testing.  Not completely closing the door on that argument, the Board found that, at this stage of the proceeding, the “data is reasonably clear, and not so deficient that it can be discounted completely.”  More specifically, at this stage of the proceeding, there was no reason to doubt the veracity of the proffered testimony.  Presumably, such doubt, if any, can be created by Patent Owner in the trial with its own expert.  As such, the Board granted a trial based on anticipation based on two references.

Relatedly, the Board found that the use of an inherent disclosure can be used to establish obviousness.  Order at 14.  “It is not a requirement that the inherent properties were known at the time of the invention.”  Id.  Case law cited by Patent Owner on this point was distinguishable because Patent Challenger did not argue that the latent properties themselves  provide the rationale for combining the prior art references.  Instead, Patent Challenger predicated obviousness upon the express teachings of the cited references, plus expert testimony.  In view of this analysis, the Board granted certain obviousness grounds, but denied others, in instituting the IPR trial.

In summary, the Board granted the petition of Patent Challenger as to 24 of the 34 challenged claims in the ‘102 patent on obviousness and anticipation grounds, at the same time, setting forth key analysis relating to the issue of inherency in both anticipation and obviousness contexts.

37 for 42: Previously-Considered Art Lives Again in Grant of Inter Partes Review Trial

iStock_000014464933XSmallThe Board has again failed to toss aside argument and art previously considered by the Patent Office (this time in an ex parte reexamination) and, instead, instituted an inter partes review trial on all six challenged claims in a case styled Nexans, Inc. v. Belden Technologies, Inc. (IPR2013-00057), involving US Pat. No. 6,074,503. Four of 9 proposed grounds for challenge were granted in the Board’s decision.

The invention of the ‘503 patent involves a method of producing a cable. The method includes a step of passing a plurality of transmission media such as wires and a core through a first die which aligns the plurality of transmission media with surface features of the core and prevents twisting motion of the core. The method includes another step of bunching the aligned plurality of transmission media and core using a second die which forces each of the plurality of transmission media into contact with the surface features of the core. The bunched plurality of transmission media and core are twisted close to the cable, and the closed cable is jacketed.

Patent Owner first argued that because three of the references contained in the petition were already considered by the examiner in a prior ex parte reexamination which resulted in confirmation of the claims, the Board should deny those portions of the petition. The Board cited 35 U.S.C. § 325(d) and stated the statute gives the Director the authority not to institute review on the basis that the same or substantially the same prior art or arguments were presented previously to the USPTO, but does not require so. Because the Patent Challenger’s alleged unpatentability grounds have some merit, the Board declined to deny the petition under 35 U.S.C. § 325(d). Order at 8. This continues a trend of the Board’s willingness to consider references even if they were previously considered during original prosecution or a reexamination.

The Board then turned to its claim construction analysis and interpreted the terms “core” and “prevents twisting motion of the core.” Basing its definition of “core” strictly on the specification of the ‘503 patent, the Board found that the term “core” does not have to have a bulky or extensive cross-section and there is no reason to exclude structure in the form of thin tape from forming or constituting the core. The Board also determined that “prevents twisting motion of the core” was met by the prevention of twisting in the area where the core passes through the first die once the desired position of the core for alignment during production is established. Thus, twisting of the core need not be prevented (1) at all places along the axial length of the core, or (2) before the desired alignment of the core has been determined and put in place and cable production has commenced.

The Board then considered several grounds asserting anticipation of the challenged claims.  To that end, Patent Challenger argued that a prior art reference disclosed a branching board of a first die which inherently prevented twisting of the core. The Board rejected the argument, stating that because the disclosure does not show an axial view of the branding board in the direction of cable feed, it could not be known what manner the core passes through the branching board. To establish inherent disclosure, the limitation at issue necessarily must be present in the corresponding element described in the prior art reference. Inherency may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient to establish inherency. Order at 26. The Board found that even if the branching board, in some circumstances, prevented twisting of the core, the possibility is inadequate to establish inherent disclosure of twist prevention.

In the obviousness challenge grounds analysis, the Board determined that inserting an additional die upstream of a wire-splitting board of the assembly of a prior art reference involved merely a predictable use of a prior art element disclosed in other references.  Further, Board held that such a combination need not be predicated on any specific teachings; that is, the Board “need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” Order at 33.

Patent Owner sought exclusion of one of the Patent Challenger’s exhibits on the ground that it constituted inadmissible hearsay. The exhibit is a collection of selected trial transcripts from related litigation, including the testimony of an expert witness. The Board stated that exclusion of evidence at this stage of the proceeding is premature. Order at 41. In any event, the exhibit appeared to have been relied on by the Patent Challenger only in connection with arguments regarding a reference that was not applied as a basis for any granted challenge grounds.

In the end, the Board instituted trial on all challenged claims including, notably, some challenge grounds that used a reference that was previously considered during an ex parte reexamination.

35 for 40: Unsupported Expert Declaration Leads to Denial of Two Petitions for Inter Partes Review

iStock_000015279515XSmallMonsanto had two petitions for inter partes review denied when the Board determined that a supporting expert declaration was entitled to little weight. Monsanto was challenging two Pioneer Hi-Bred patents in cases styled as Monsanto Co. v. Pioneer Hi-Bred Int’l, Inc. (IPR2013-00022 and IPR2013-00023) involving US Patent Nos. 5,518,989 and 6,162,974. The Board denied all challenge grounds for both patents.

The ‘989 and ‘974 patents describe a method of enhancing the quality of maize seed. In particular, the method involves defoliating maize plants after pollination. Generally, the patents describe defoliating the plant at between 600 and 850 growing degree days after pollination. The challenged claims require both defoliating within a specified growing degree day time frame and obtaining enhanced seed vigor.

Patent Challenger relied upon an expert declaration to establish that the prior art references teach and/or provide a reason to defoliate maize plants withing the claimed 600 to 850 growing degree day time frame. Patent Owner disagreed with the expert’s conclusions and contended that the declaration was entitled to little weight, because the expert “withheld data and calculations that underlie his opinions.” The Board agreed that the declaration was entitled to little weight, citing 37 C.F.R. Sec 42.65(a): Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight. Order at 7-8.

The Board found that the declaration failed to provide sufficient underlying data such that one of ordinary skill in the art would have a reasonable basis to believe that his growing degree day calculations and conclusions are correct. Absent the expert declaration, Patent Challenger failed to identify sufficient credible evidence to establish that the prior art meets the growing degree day limitation of the claims, because the prior art references do not discuss the number of growing degree days between pollination and defoliation.

The Board also rejected Patent Challenger’s inherency argument — that enhanced seed vigor is obtained from the prior art defoliation techniques. Patent Challenger again was relying on the expert declaration for this argument, but the Board found that the declaration did not provide a sufficient or credible explanation as to why the ordinary artisan would have expected enhanced seed vigor.  This was especially so in light of the fact that the patents-at-issue taught the opposite.

In the end, Patent Challenger did not provide evidence of how the prior art references taught the claim limitations beyond the expert declaration and that declaration was fatally flawed. Once the Board found that there was insufficient underlying data to believe the calculations and conclusions of the expert declaration, Patent Challenger’s case was lost and the Board denied the petitions.

19 for 20: Tire Pressure-Monitoring Patent is 19th Put Into Inter Partes Review Trial

OLYMPUS DIGITAL CAMERASchrader-Bridgeport was successful in forcing a patent owned by Continental Automotive Systems US into an inter partes review trial, in the case styled as Schrader-Bridgeport International, Inc. v. Continental Automotive Sys. US, Inc. (IPR2013-00014), involving US Patent No. 6,998,973.  The Board granted the IPR trial based on all 10 challenged claims and on one of 9 grounds for challenge.

The subject matter of the ‘973 patent involves a data transmission method for a tire-pressure monitoring system of a vehicle.  More particularly, the method prevents data collisions from the various wheel units of an automobile through the use of internal clocks in each wheel unit.  The main dispute between the parties involved the last clause of independent claim 1, including the terms “natural time lag” and “used to prevent collisions.”

Starting with the step of claim construction, the Board noted that Patent Challenger’s claim construction of “natural time lag” corresponds to a position taken by Patent Owner in concurrent district court litigation.  That definition, which Patent Owner urged the Board to adopt for purposes of this IPR, comprises “sensors with any amount of imprecision, even lower than +/- 1%, creates a sufficient ‘natural lag’ to be covered by the claim.”  Because the Board could not discern how this definition aligned with a litigation position, or why the +/- 1% limitation should be included, it found that the proposed construction was overly broad in light of the patent specification.  Instead, the Board looked to the specification and found that one of ordinary skill would have understood that term to mean that tolerance of the clocks is sufficiently poor so as to automatically and randomly induce time shifting of transmission from the clocks.  Order at 8.

Turning to the term “used to prevent collisions,” the Board agreed with the definition proposed by Patent Challenger; namely that the occurrence of collisions is reduced. All other terms in the challenged claims were given their ordinary and customary meanings.  Id.

Having construed the above-two terms, the Board turned to the issue of anticipation, noting that Patent Challenger’s arguments relied upon implicit disclosures.  That is, Patent Challenger relied upon inherency.  Order at 10.  With regard to the first reference at issue, the Board found that Patent Challenger’s inherency argument neglected to consider the entirety of the teachings of the reference.  In light of that more complete analysis, the disclosure would not necessarily function in a manner consistent with the claimed invention.  MEHL/Biophile International Corp. v. Milgraum, 192 F.3d 1362, 1365 (Fed. Cir. 1999) (“Inherency” requires that a given fact must necessarily result, and not be established based on mere probability or possibility).  Order at 12.  Relatedly, the Board found that the second reference upon which Patent Challenger asserts under an inherency theory was similarly insupportable.  Order at 13.

The Board was more persuaded, however, by Patent Challenger’s grounds for challenge based on obviousness.  The Board’s analysis overcame Patent Owner’s arguments that the combinations at issue were: 1) based on non-analogous art, 2) taught against the combination, and 3) there was “no reason” to combine.  With respect to the non-analogous art argument, the Board found that, while the art may not have been in the same field of endeavor, the test for whether a reference is analogous could, alternatively, be based on the fact that the reference is reasonably pertinent to the particular problem at issue.  Wyers v. Master Lock Co. 616 F.3d 1231, 1238 (Fed. Cir. 2010).  Order at 17.

The Board also found the “teaching away” argument to be unavailing.  Order at 18.  While the art at issue may recognize a particular preferred benefit, the reference did not criticize, discredit, or otherwise discourage investigation into other viable benefits.  DePuy Spine Inc. v. Medtronic Sofamor Danek, 567 F.3d 1314, 1327 (Fed. Cir. 2009).  Lastly, the board denied that there was “no reason” to combine the teachings of the subject references.  Because the combination constituted implementing known teachings concerning the basic technology at issue, this reasoning by Patent Owner was not given weight.  Order at 18-19.

In the end, the IPR trial was instituted based on a number of obviousness grounds.  Other grounds, deemed redundant to the above-discussed grounds, were denied.  Interestingly, the Board did provide additional background on this point, as compared to earlier decisions.  Specifically, the Board suggested that, if it did not succeed on the grounds put into the trial, Patent Challenger would likely fail with regard to the other grounds, as well.