Inherency Argument Comes Up Short in Inter Partes Review Petition

Doctor EquipmentDespite having multiple grounds denied, Becton, Dickinson and Company was able to get 8 challenged claims of a One Stockduq Holdings patent into a trial for inter partes review, in a case styled as Becton, Dickinson and Co. v. One StockDuq Holdings, LLC (IPR2013-00235), involving U.S. Pat. No. 5,704,914.  Of interest in the decision is the Board’s decision that a prior art reference at issue did not inherently disclose a flexible catheter.

The ‘914 patent relates to a unique catheter assembly which attempts to remedy the widely-recognized problem of accidental needle sticks related to the catheter needle being exposed during the process. More specifically, the ‘914 patent describes three essential parts of the invention: a catheter, catheter hub, and needle body.

The Board its analysis by construing several claim terms.  First, the Board referred to a conventional, online dictionary to assist in the construction of the term “flexible catheter.” To that end, the Board interpreted “flexible” to mean “capable of bending easily without breaking.” Next, the Board construed the term “flexible resilient diaphragm” to mean a “thin sheet of material forming a partition which is capable of bending or being penetrated by a needle easily without breaking and able to spring back into shape after being penetrated” after consulting the same online dictionary. Thirdly, the Board defined the term “between” (as it relates to the invention parts) as “at, into, or across the space separating (two objects or regions).”  Again, the Board relied upon an online dictionary for this definition.

Other than a conventional patentability analysis, of interest in the Board’s decision was its consideration of Petitioner’s argument that a prior art reference disclosed a “flexible catheter” by disclosing that the catheter may be made from several materials, including PTFE.  Petitioner’s expert even conclusorily stated that PTFE “is commonly known in the medical community as a flexible material.”  Order at 22.  The Board rejected this argument, though, finding that “[t]o show inherency, [Petitioner] would need to prove that a catheter made of PTFE would necessarily be flexible.”  Id. (emphasis in original).  As such, the expert testimony was not specific enough, for failing to state that PTFE is necessarily or always used in flexible form in the medical community.

In the end, despite this failing relating to one of the references, Petitioner was able to get 8 challenged claims of the ‘914 patent into a trial for inter partes review.

To Be a Real Party-In-Interest, One Must Control Actions of a Party to an Inter Partes Review

Green grass  fuel pump outMeeting success on almost every asserted ground, Syntroleum was able to get 20 challenged claims of a Neste Oil patent into a trial for inter partes review in a case styled as Syntroleum Corp. v. Neste Oil Oyj (IPR2013-00178), involving U.S. Pat. No. 8,212,094.

The ‘094 patent relates to a “process for the manufacture of diesel range hydrocarbons from bio oils and fats, commonly called ‘biodiesel’.” More specifically, the ‘094 patent discloses a two-step process in which a biological feed stream, diluted with a hydrocarbon, is 1) hydrodeoxygenated; and then 2) isomerized.

The Board first addressed an argument by Patent Owner that the Petition failed to name all real parties-in-interest. Patent Owner alleged that two other corporations, who were named as co-defendants in concurrent litigation brought by Patent Owner, were real parties-in-interest but were not named. The Board rejected this argument, despite the fact that two of those corporations formed the third as a joint venture, shared counsel, and an indemnification agreement among the parties existed.  None of these facts, per the Board, prove that any party is able to control the actions of another.  Order at 6 (“Whether a party that is not named in an inter partes review proceeding is a ‘real party-in-interest’ or ‘privy’ is a ‘highly fact-dependent question,’ taking into account various factors such as whether the non-party ‘exercised or could have exercised control over a party’s participation in a proceeding’ and the degree to which a non-party funds, directs, and controls the proceeding.”), citing, Office Patent Trial Practice Guide, 77 Fed. Reg. 48756, 48759-60.

Then, the Board moved to a fairly detailed claim construction analysis, that centered largely on Patent Owner’s attempts to limit various terms in the claim to “commercial-scale” production processes.  Patent Owner sought to introduce this limitation to the claims via the construction of the preamble and the use of a dictionary definition.  The Board declined to incorporate this “commercial-scale” limitation into the claims, however, using the breadth of the dictionary definition cited by Patent Owner against it.  Order at 10.  More specifically, while the dictionary definition had some verbiage that supported Patent Owner’s position, other portions of that definition suggested that Patent Owner’s definition was too narrow.

The remainder of the Board’s decision included straightforward analysis of the anticipation and obviousness of the challenged claims that underlie the Board’s decision to institute trial.

Shoe Wars Reach PTAB as Inter Partes Review Brought by Adidas is Granted Against Nike Patent

Pair of sneakersChallenging a patent of a major industry rival, Adidas was able to get all 46 challenged claims of a Nike patent into a trial for inter partes review in a case styled as Adidas AG v. Nike, Inc. (IPR2013-00067), involving U.S. Pat. No. 7,347,011.

The ‘011 patent relates to footwear having a textile upper. More specifically, the patent discloses said upper incorporating a knitted textile element and having a sole structure secured to the upper.

The Board’s claim construction analysis was notable in that it first took Petitioner to task relating to its proposed construction of “single type of textile” because Petitioner’s definition “simply introduces a new term…which does not appear in the claim, for construction.”  Order at 12.  Instead, relying upon two dictionary definitions, the ‘011 patent specification, as well as other claims of the ‘011 patent, the Board formulated its own claim construction the specific “type” of textile to be used.  The claim construction analysis for the other claim terms-at-issue was similarly detailed and heavily relied upon intrinsic evidence.

Patent Owner chose a well-worn, and typically unsuccessful, path in arguing that the prior art references at issue were previously considered by the Patent Office and/or are cumulative to what was considered.  The Board again, however, gave this argument little weight, finding that Petitioner “presents different arguments and new supporting evidence that were not before the Examiner.”  Order at 17.

In the end, the Board instituted an IPR trial based upon two primary references, pursuant to grounds that alleged both anticipation and obviousness – the Board holding that “[b]ecause anticipation is the epitome of obviousness, a disclosure that anticipates under §102 also renders the claim unpatentable under §103.”  Order at 36.

PTAB’s Detailed Claim Construction Analyses Exemplified in Grant of Three IPR Petitions

Cloud computing conceptThe Patent Trial and Appeal Board (PTAB) has impressed with its detailed and well-grounded claim construction analyses to date in its decisions instituting inter partes review trials.  Examples of such analyses were on display in two related institution orders, styled as Oracle Corp. v. Clouding IP, LLC (IPR2013-00098IPR2013-00099, and IPR2013-00100), involving U.S. Pat. Nos. 6,918,014, 7,065,637, and 5,825,891.

Briefly, from a technology perspective, the ‘014 patent relates to systems and methods for maintaining the consistency of storage objects across distributed storage networks.  More specifically, the invention relates to a, “dynamic distributed data system and method which provides for minimized latency, reduced complexity, and is extensible, scalable, and isotropic.”  The ‘637 patent relates to an interactive computer system that allows the dynamic design and creation of a computing environment. More specifically, the ‘637 patent discloses that the system permits computer system architects to design the computing environment by allocating resources and specifying how they will be used.  The ‘891 patent relates to a method for enabling computers to communicate using encrypted network packets. More precisely, the invention relates to a method for generating tunnel records and subsequently updating the tunnel records.

With regard to the ‘014 patent, the Board defined “storage object” and “storage object routing table.”  With regard to “storage object,” the Board mostly agreed with Patent Owner’s proposal, but ultimately adopted a definition that was more consistent with the verbiage used in the patent specification.  Order at 12.  Further, to assist in the clarity of the definition, the Board also relied upon a dictionary definition.  With regard to “storage object routing table,” the Board again tweaked the proposed construction from Patent Owner to make it more consistent with the specification.  Order at 13.  Guided by the strong advice of the Federal Circuit, the Board’s Order demonstrates it will look for definitions grounded in the intrinsic evidence.

With regard to the ‘637 patent, the Board focused on three claim terms that needed construction for purposes of deciding whether to institute the IPR trial.  Relying heavily on the specification and other claim language, the Board first construed “resources” to mean “any hardware, software, or communication components in the system.”  Order at 7. Second, with regard to the term “visual construction,” the Board lacked explicit disclosure of a definition from the specification, given that the phrase “visual construction” was not found in the specification.  The Board, however, performed a detailed analysis of related disclosures from the specification to settle on a definition of the claim term. Lastly, regarding the term “configuration,” despite the parties agreeing upon a proposed construction, the Board disagreed, finding the parties’ proposal imprecise and vague.

With regard to the ‘891 patent, the Board first rejected Patent Owner’s narrow construction of “temporary configuration password,” and instead based its definition firmly in the patent specification.  Second, the Board departed from both parties’ constructions of the term “authenticating,” again turning to the ‘891 specification to come up with the term’s meaning as “a process which validates a computer or user.” Lastly, the terms “tunnel record” and “tunnel record information” were again construed with strong reference to the specification.  Imprecise proposed definitions from Patent Owner were discarded in favor of direct quotes from the specification.  Order at 10-12.

In the end, these three decisions provide a good overview of a typical PTAB claim construction analysis – heavy reliance on intrinsic evidence, with a healthy does of skepticism regarding the parties’ own proposals for claim construction.

Board’s Claim Construction Limited to What it Needed To Initiate IPR Trial

In an interesting decision, the Board limited its claim construction analysis to whether a compound found in the prior art was covered by the claims, as opposed to coming to a determination of what were the full metes and bounds of the claim limitation’s meaning, in instituting an inter partes review in St. Jude Medical, Cardiology Division, Inc. v. The Board of Regents of the Univ. of Michigan (IPR2013-00041), involving U.S. Pat. No. 5,746,775.  All six challenged claims were put into the trial and the University did not file a preliminary patent owner response.

The ‘775 patent relates to methods of exposing biomaterial for implantation in a living being to an alcohol to inhibit in vivo calcification. More precisely, the invention relates to contacting the biomaterial with a greater than 50% by volume solution of an alcohol for a period of time sufficient to render the tissue resistant to in vivo calcification. The solution may optionally contain additional anti-calcification agents, such as a soluble salt of a metallic cation like Al+3 or Fe+3.

In a practical claim construction ruling, the Board determined that the claim limitation “C1-C3 aliphatic alcohol” covered glycerol, because that is the alcohol that is disclosed in the prior art at issue.  In coming to its decision, the Board looked to dictionary definition of “alcohol,” as well as the specification of the ‘775 patent.

The Board followed the brief claim construction analysis by determining the effective filing date of the ‘775 patent to determine the whether a reference cited by Patent Challenger qualified as prior art. Patent Challenger argued that the ‘775 patent, a continuation-in-part, was not entitled to its ancestor’s filing date because the earlier-filed application did not provide adequate written description support for the limitations in the challenged claims. The Board agreed with Patent Challenger inadequate support was provided in the ancestor patent documents to the ‘775 patent for at least two limitations of the subject claims.  As such, the ‘775 patent was entitled to only its own filing date as a priority date, thereby qualifying the reference in question as prior art.

In view of these findings, the Board had the ammunition it needed to grant Patent Challenger’s Petition for inter partes review as to all 6 challenged claims in the ‘775 patent based on obviousness grounds.

52 for 57: Oracle Successful Again in IPR War Against Clouding IP

The IPR battles between Oracle and Clouding IP continue, with 17 petitions for Inter Partes Review currently pending.* In this installment, Oracle was successful in getting seven of ten challenged claims of a Clouding IP patent into an inter partes review trial in a case styled as Oracle Corp. v. Clouding IP, LLC Inc. (IPR2013-00089), involving U.S. Pat. No. 6,631,449.

The ’449 patent relates to methods and systems for maintaining the consistency of storage objects across distributed networks. More specifically, the ‘449 patent discloses a dynamic distributed data system and method that provides reduced complexity and is extensible, scalable, and isotropic.

The Board began with a findings of fact, detailing pertinent information in the two main references that Patent Challenger cited in its grounds for unpatentability. Then, the Board turned to a brief claim construction analysis, where it interpreted the terms “a repository of last resort,” “a name tag,” and “a storage object.” After hearing interpretations from both Patent Challenger and Patent Owner, the Board looked to the specification and a technical dictionary to obtain constructions of each, with the result being disagreement with Patent Owner in only one instance.

Then the Board moved on to an analysis of the alleged grounds of unpatentability. Patent Challenger alleged the challenged claims were anticipated or obvious over four combinations of prior art references. As to the anticipation grounds, the Board declined to grant Patent Challenger’s proposed grounds, basing its decision on the holding that the cited reference did not describe the same, “repository of last resort,” as was cited in the challenged claims of the ‘449 patent.  The “repository of last resort,” as described in the prior art was deemed different than the same phrase, as used and claimed in the ‘449 patent.

There were mixed results for the claims challenged on obviousness grounds. In an analysis that did not stand out for any particular noteworthy analysis, seven of the ten challenged claims were placed into the IPR trial based on a single ground of unpatentability.

*As we continue to get caught up on past decisions (in between billable hours), we note that the battle between Oracle and Clouding IP has been settled, with all 17 IPR proceedings having been terminated by joint stipulation and the filing of a settlement agreement.

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.

42 for 47: Claim Construction Takes Center Stage in Grant of Inter Partes Review Trial No. 42

In a claim construction-centric decision by the PTAB, Oracle was successful in getting all 10 of the challenged claims of an Clouding IP patent into inter partes review trial in a case styled as Oracle Corp. v. Clouding IP, LLC Inc. (IPR2013-00073), involving U.S. Pat. No. 6,738,799. The ’799 patent relates to a method of synchronizing files using a signature list. More specifically, the ‘799 patent discloses a method for synchronizing local copies of files on a given set of computers with current versions of the files on a network drive.

The Board began with a claim construction analysis that covered several claim terms in dispute. First, in what turned out to be the only instance of the Board adopting Patent Owner’s interpretation, the Board resolved the differences between the parties’ proposed interpretations of the term “signature list.” The Board declined to adopt Patent Challenger’s narrow interpretation in favor of Patent Owner’s construction, finding that the specification did not require the more narrow definition provided by Patent Challenger.

Several other phrases were also evaluated by the Board, the group consisting of “update,” “command to copy,” and “command to insert,” among others. With respect to all these terms, the Board declined to adopt Patent Owner’s narrow interpretations, relying at times on dictionary definitions (Order at 10), the doctrine that it is improper to import limitations from the specification into the claims (Order at 10, 15), pointing to claim language to assist in the interpretation (Order at 11), and considering the preambles of the challenged claims (Order at 16).

The Board then analyzed Patent Challenger’s seven grounds of unpatentability. Patent Challenger alleged four obviousness grounds and three anticipation grounds. Three of the four obviousness challenges were found by the Board to meet the reasonable likelihood standard, with the last one being denied as redundant. Further, in relying upon Patent Challenger’s expert testimony, the Board found that the challenged claims were anticipated by two of the three different combinations of references, with the final one being denied as redundant.

It is worth noting that the Board again discounted the fact that one of the challenged grounds was already considered in the original prosecution of the underlying patent.  The Board has, invariably, provided little deference to prior Patent Office actions.  Order at 22-23.

In the end, the Board granted trial for all challenged claims based on multiple anticipation grounds as well as grounds of obviousness over several combinations of references.

41 for 46: Two IPR Trials Initiated After Detailed Obviousness Analysis by Board

iStock_000000202778XSmallChimei Innolux Corporation (CMI), an early veteran of inter partes review proceedings, had two more petitions for granted. CMI was challenging two Semiconductor Energy Laboratory (SEL) patents in cases styled as Chimei Innolux Corp. v. Semiconductor Energy Lab. Co., Ltd. (IPR2013-00066 and IPR2013-00068), involving U.S. Pat. Nos. 7,876,413 and 8,068,204.  The IPR trials were granted based on all challenged claims of the subject patents.

The ‘413 and ‘204 patents relate to liquid-crystal display (LCD) devices with two opposing substrates bonded to each other with a sealant. More precisely, the two patents disclose a solution to the problem of non-uniform seals which create an uneven gap between the substrates and can lead to deterioration of picture quality. The patents also describe connecting two conducting lines in parallel through the insulating film of the device along with an adjustment layer.

At the outset of both decisions, the Board addressed Patent Challenger’s request that the Board intercede in Patent Owner’s pending patent application and take immediate jurisdiction over all related applications.  Order at 6.  Treating the request as a motion, the Board denied Patent Challenger’s request.  Simply, Patent Challenger did not show that the claims in the pending application were patentably indistinct from the claims at issue in the IPR and, as such, Patent Challenger had failed to show why the Board should intercede.  Id. 

Next, the Board rejected Patent Owner’s argument that inter partes review petitions were improper pursuant to 35 USC §325(d) because the prior art references were already considered during the prosecution of the applications leading to each patent. The Board stated that without demonstrating that substantially the same arguments were made both times, the inter partes review would not be improper. Next, the Board in each case evaluated Patent Owner’s contention that the review should be denied because the petition failed to identify all real parties-in-interest. SEL asserted that several other co-defendants with Patent Challenger in a pending case all agreed to be bound by inter partes review, but the petition failed to identify them as real parties-in-interest. Because the Board did not find that SEL presented any persuasive evidence that these additional parties had any control over the IPR proceeding, it denied SEL’s contention.  More specifically, the Board might have been persuaded by evidence that the third parties authored the Petition, exerted control over its contents, provided funding for the Petition, etc.  CMI I Order at 9.

Having dispensed with SEL’s procedural challenges, the Board continued with a claim construction analysis, centering on the phrase, “contact through an opening,” and more specifically the definition of, “through.” SEL argued that the phrase meant, “made possible by (or by virtue of) the opening.” CMI did not submit its own interpretation, and the Board found SEL’s interpretation of the phrase to be consistent with the ordinary meaning of the phrase, in light of dictionary definitions of the term, “through.” (The American Heritage Dictionary of the English Language).

The Board then moved on to analyze Patent Challenger’s asserted grounds of unpatentability. In each case, Patent Challenger asserted all challenged claims were unpatentable as being obvious over two combinations of prior art references. Using an expert declaration from Patent challenger, the Board proceeded through a fairly straightforward obviousness analysis, concluding that in each case, the challenged claims were obvious over the prior art, with one of the two combinations of references in each case being denied as redundant. As has been previously seen, the Board showed a willingness to grant IPR trial on obviousness grounds using prior art that was already considered during the prosecution of the application that lead to the patent(s) in question.

In summary, the Board granted the petition of Patent Challenger as to all of the challenged claims in the ‘413 and ‘204 patent on obviousness grounds.

36 for 41: Workmanlike Board Decision Gets Patent Challengers Back in the Winning Column

iStock_000007197208XSmallIn a decision lacking in its typical flair, the Board has instituted an inter partes review trial for all challenged claims in a case styled Midland Radio Corp. of Florida v. Cobra Electronics Corp. (IPR2013-00021), involving US Pat. No. 6,584,306. Patent Challenger asserted 39 separate grounds of unpatentability, but the Board only authorized the trial on three grounds.  The Patent Owner did not file a Preliminary Response in this case.

The ‘306 patent is drawn to a “point-to-point” two-way radio system in which hand held walkie-talkies communicate without using a base station. Each walkie-talkie has a transmitter that transmits a call announcement signal and a separate voice signal. The voice signal is different from the call announcement signal and is transmitted over a fixed frequency range. Each walkie-talkie also has a receiver that receives the voice communications signal, a vibrator responsive to the call announcement signal, a vibrator responsive to the call announcement signal, an audible notification means responsive to the call announcement signal, and a switch for selecting an audible call announcement and a vibrational call announcement.

Starting with a claim construction analysis, the Board agreed with Patent Challenger that “switch” means a device for choosing among at least two options, and that none of the claim  terms should be construed as “means-plus-function” even though the term “means” appears in the claim. Taken in context, the claim is not limited to any particular structure disclosed in the specification. Order at 9. The Board also raised its own claim construction analysis for a term in the patent, relying on Webster’s New Collegiate Dictionary (1977) to define “separate” as “set apart or kept apart: not shared with another; dissimilar in identity” and “different” as “partly or totally unlike in nature, form or quality.” (It seems the Board’s decision may have erroneously listed the year as 1977 instead of 1997 – the priority date of the patent is February 1998, so a 1997 dictionary would be significantly more appropriate than one from 1977).

The Board then turned to an obviousness analysis, finding that two of the asserted references were missing a key limitation of the claims.  As such, the Board denied all other grounds that used either reference as the primary reference. In the end, the Board’s analysis did not contain any other notable tidbits, except the fact that the vast majority of grounds were denied as redundant.