35 for 38: Third Petition for Inter Partes Review Denied

Padlock circuit

After an early start of granting almost every IPR petition, the Board has now denied its third petition seeking inter partes review. Wowza Media Systems was unsuccessful in getting any of the 19 challenged claims of an Adobe patent into inter partes review trial in a case styled as Wowza Media Systems, LLC and Coffee Cup Partners, Inc. v. Adobe Systems Incorporated (IPR2013-00054), involving US Pat. No. 8,051,287.  The ‘287 patent relates to establishing an encrypted communication session.

The Board started with a claim construction analysis and decided that only one of the several proposed constructions offered by Patent Challenger was material.  But, even with regard to that one term, the Board did not agree with the proffered interpretation.  More specifically, Patent Challenger submitted that the claim limitation “reserved for random data” should not be given its plain and ordinary meaning, but instead should be given a specific construction.  The Board disagreed, finding that Patent Challenger provided no reasoning or evidence to support the position that the phrase should not be interpreted in accordance with its ordinary meaning. Order at 6.

The Board then turned to a claim limitation that was not included in the list of terms addressed by Patent Challenger.  The Board found that “pre-defined” was the term most pertinent to the issues raised in the petition, even though it was not addressed by either of the parties!  To define the term, the Board looked to Webster’s Third New International Dictionary, Unabridged (1993) and found that the definition of “pre-defined” from that dictionary comported with the plain and ordinary meaning of the term.

The Board then moved on to an analysis of the proposed grounds of unpatentability. Patent Challenge alleged a specific combination of references for an obviousness challenge, but also alleged obviousness over various other combinations of references in the alternative, without providing support by applying the combinations to any of the claims. Because the Patent Challenger provided insufficient analysis of several references as applied to specific limitations of the claims, the Board did not consider those references further. Order at 10-11. Additionally, the Board criticized both the Patent Challenger’s lengthy claim chart for providing little to no guidance as to where the challenged claim portions were found in the references, and the Patent Challenger’s 100 page expert declaration for simply tracking and repeating the arguments presented in the petition without relating to any specific claim limitations. Order at 12.

The Board then rejected Patent Challenger’s reliance on KSR support for obviousness because Patent Challenger did not identify any teaching in the references of establishing one of the claim limitations and, therefore, did not demonstrate a prima facie case of obviousness under KSR. Order at 14-15.  Relatedly, Patent Challenger was deemed not to have identified a limitation from the claims with respect to a second combination of references. Order at 16.  Lastly, with respect to a third combination of references, Patent Challenger was deemed not to have offered a convincing rationale as to why one of ordinary skill in the art would have chosen to combine the references in the manner suggested by Patent Challenger.  Order at 19.

In the end, the petition was denied because the Board did not agree with the Patent Challenger’s special broader claim construction positions, and the lengthy claim charts, expert declaration, and petition all failed to specifically identify where each limitation from the claims was found in the prior art references. As a result, all 19 challenged claims were denied.

32 for 33: PTAB Again Allows Re-Argument of Grounds Denied in Earlier Reexamination

iStock_000019792592XSmallThe PTAB continued its trend of not providing any deference in an inter partes review to previous actions by the Patent Office with respect to a previously-challenged patent in a case styled Vestcom Int’l, Inc. v. Grandville Printing Co. (IPR2013-00031), involving US Pat. No. 8,020,765. Three of the fourteen challenge grounds were granted, with the Board finding the other 11 grounds to be redundant.

The invention of the ‘765 patent relates to a method of printing, distributing, and placing price tags and point-of-purchase signs for use in retail store shelves and displays. According to the ‘765 patent, the invention is particularly useful for “just-in-time” printing, delivery of price tags with minimal lead times, and faster price tag changes at stores – all while reducing labor costs.

As has become its pattern, the Board first construed two key claim limitations.  First, the Board adopted Patent Challenger’s definition for “digital press,” after noting that Patent Owner did not contest the construction.  Second, the Board, sua sponte, construed the term “just-in-time,” finding that its meaning “is not apparent to us.”  Order at 13.  In construing that term, the Board first noted that the ‘765 patent did not contain an explicit or special definition of “just-in-time.”  As such, the Board turned to a dictionary definition, citing to an online resource (xreferplus.com).  Order at 15.

After construing the two claim terms, the Board proceeded to analyze the Patent Owner’s estoppel argument, that Patent Challenger previously filed a request for inter partes reexamination of the ‘765 patent that included 405 proposed grounds of rejection (fourteen of which were identical to those contained in the present petition for inter partes review). In the prior reexamination, the PTO issued a Reexamination Order denying the petition for inter partes reexamination.  Based on this denial, Patent Owner sought a finding that the present petition for inter partes review should be denied.  The Board disagreed.

First, the Board determined that the previously-codified estoppel provisions of inter partes reexamination (35 USC §317(b)) did not apply to inter partes review. Order at 17. Next, the Board determined that the current version of 35 USC §318(a) did not apply because that section only related to final, written decisions based on a petition for inter partes review, not inter partes reexamination. Order at 17-18. Finally, the Board determined that issue preclusion did not apply because the prior Reexamination Order only addressed a different claim not challenged in the present inter partes review and did not include any substantive analysis or draw any conclusions relative to the claims challenged in the present inter partes review, even though those claims were included in the prior request for inter partes reexamination.  That is, because the specific denial of the reexamination petition only applied the art to claim 1, not the claims challenged here, issue preclusion was inappropriate. Order at 18-19. Therefore, the Board held that Patent Challengers were not estopped from presenting identical grounds for unpatentability.

In the end, the Board granted trial on all thee challenged claims based on three obviousness challenge grounds each involving a combination of at least three prior art references. Important to that analysis was the Board’s rejection of Patent Owner’s argument that there was insufficient rationale to combine the references cited by Patent Challenger. In rejecting this argument, the Board noted that Patent Owner did not provide “credible evidence or arguments concerning any technological difficulties” that would prevent the combination.  Order at 24.  Of course, Patent Owner was unable to put forth expert testimony at this stage of the proceeding.

Lastly, the Board denied an argument that secondary considerations militated against a finding of a reasonable likelihood that one or more claims was unpatentable.  Order at 25.  To that end, the Board found that there was no showing of a nexus between the claimed commercial success and the claimed invention.  To establish commercial success, Patent Owner had to show that the success was “directly attributable” to the claimed features.  Further, Patent Owner needed to address whether other factors, including advertising and promotion, contributed to the commercial success.

18 for 19: Third Illumina Inter Partes Review Trial Instituted

iStock_000020200155XSmallThe third of three petitions for inter partes review brought by Illumina, Inc. against Columbia University was granted in the IPR styled as Illumina Inc. v. The Trustees of Columbia University in the City of New York (IPR2012-00011), involving US Patent No. 8,088,575.  The other two decisions regarding related IPR proceedings can be found HERE and HERE.  The PTAB instituted the IPR trial against all 4 challenged claims based on four out of 22 proposed grounds for unpatentability.

As in the other two IPR decisions, the subject matter of the ‘869 patent involves sequencing DNA by incorporating a nucleotide analogue into a strand of newly synthesized DNA, and then detecting the identity of the incorporated analogue.  From a claim construction perspective, the Board construed “deazapurine,” as it had done in the earlier IPR trial decision, but also construed the term “unique,” using an online dictionary, finding that one of skill in the art would understand that term to mean “being the only one of its kind.”  Order at 8.

The Board’s decision included many of the same issues as contained in the related IPR trials, including incorporation by reference, that it is unnecessary for a single working example to disclose the claimed invention to anticipate, and similar obviousness issues.  Other interesting issues were, however, discussed.

For example, the Board considered the argument from Patent Owner that, given the large number of alternative approaches and features disclosed in a prior art reference, the disclosure amounts to a “genus” of many possible methods.  As such, the specific method of claim 1 could not be immediately envisaged.  Order at 15.  The Board agreed that this line of argument had merit, and turned to the issue of whether the need to choose from the various alternatives disclosed in the prior art would preclude Patent Challenger from establishing a reasonable likelihood that claim 1 was anticipated.  In the end, though, the Board sided with Patent Challenger, finding that, while there are multiple selections to be made, each selection is made from a defined set of possible choices.  Order at 15.  As such, the IPR trial was instituted based on §102 grounds despite Patent Owner’s argument.

In addition, it is worth noting the Board’s rationale in denying one of the grounds for unpatentability based on §102.  Patent Owner argued that the prior art at issue was not anticipatory because it did not describe a base labeled with a unique label.  The Board agreed, finding that the prior art had a “very general disclosure” but no explicit teaching on the position of the nucleotide where to put a detectable label.  Order at 18. As such, Patent challenger was found not to have established that the general teaching was sufficient for one of ordinary skill in the art to “immediately have envisaged” the claimed limitation.

16 for 17: First of Three Inter Partes Trials Instituted on Petitions from Illumina

In the first of three petitions for inter partes review brought by Illumina, Inc. against Columbia University was granted in the IPR styled as Illumina Inc. v. The Trustees of Columbia University in the City of New York (IPR2012-00006), involving US Patent No. 7,713,698. The PTAB instituted the IPR trial against all 11 claims based on three of 22 proposed grounds for unpatentability.

The subject matter of the ‘698 patent involves sequencing DNA by incorporating a nucleotide analogue into a newly synthesized strand of DNA, and then detecting the identity of the incorporated analogue. Terms from the patent that were key to the Board’s analysis were “attached”/”immobilized and “deaza-substituted.”

The Board first considered the claim construction of the terms “attached” (claim 1) and “immobilized” (claim 11). While no explicit definition was provided for those terms in the patent, the Board looked to the specification and a dictionary (specifically, http://www.thefreedictionary.com) to determine, first, that the terms should be given the same meaning, and second, that such meaning was “that the DNA, itself, is affixed to the solid surface without intervening structures.” Order at 8.

Next, the Board turned to the issue of anticipation involving several prior art references. With regard to those references, Patent Challenger relied on the fact that those patents incorporated by reference another prior art patent that disclosed a relevant claim term (i.e., “deaza-substituted”). On this issue, the Board cited the test articulated in Advanced Display Sys., Inc. v. Kent State Univ., 212 F.3d 1272, 1282 (Fed. Cir. 2012), wherein it was held that “incorporation by reference provides a method for integrating material from various documents into a host document…by citing such material in a manner that makes clear that the material is effectively part of the host document as if it were explicitly contained therein.” Id. Further limiting what can be deemed effectively incorporated by reference, the Advanced Display decision held that “to incorporate material by reference, the host document must identify with detailed particularity what specific material it incorporates and clearly indicate where that material is found in the various documents.” Id. Because the primary references did not clearly indicate that the secondary art was being referenced for its teaching of the claim limitation at issue, the Board found that none of the grounds for unpatentability based on §102 met the standard to initiate an inter partes review trial.

As part of that decision, it is interesting to note that the Board discounted the testimony of Patent Challenger’s expert witness, finding that the expert did not provide a factual basis for his testimony as to why the teaching from the secondary reference would have been recognized by one of skill in the art. Order at 13. Further, the Board also discounted one of the primary reference’s statements that all documents referenced in the specification were “incorporated by reference.” Such a general statement, per the Board, “does not direct the ordinary skilled worker to specific disclosure [in the secondary reference].” Id.

Having discarded Patent Challenger’s §102 grounds, the Board next turned to several grounds based on §103. The Board’s analysis took on a traditional John Deere structure: (a) the scope and content of the prior art, (b) differences between the prior art and claimed invention, (c) level of ordinary skill in the art, and (d) evidence of secondary considerations. Order at 19.

The Board’s analysis then distilled the prior art down to two basic points: 1) that DNA sequencing by synthesis was known in the art, and 2) that deaza-substituted nucleotides had been used in DNA sequencing prior to the priority date of the ‘698 patent. Order at 23. Having established this distillation of the art, the Board then identified reasons why it would have been obvious to combine the DNA sequencing method with deaza-substituted nucleotides, to render the two independent claims obvious. Using this rationale, the Board ultimately granted the IPR trial on four separate §103 grounds.

It is worth remarking that the rationales being employed to institute IPR trials by various panels of the Board are disparate and, at times, contradictory. Given we are in the infancy stages of these proceedings, this is perhaps to be expected.  Over time, it seems likely that the Board’s decisions will synthesize into more uniform Orders, but it is helpful to recognize who is your Administrative Patent Judge.

15 for 16: Intellectual Ventures Inter Partes Review Trial Initiated

iStock_000002261448XSmallThe PTAB provided another victory for a patent challenger, as Xilinx successfully forced an Intellectual Ventures patent into an inter partes review trial, in the case styled as Xilinx, Inc. v. Intellectual Ventures I, LLC (IPR2013-00029), involving US Patent No. 5,632,545. Xilinx challenged 3 claims in the ‘545 patent, based upon four grounds of unpatentability.

The technology of the ‘545 patent relates to a color video projector system that uses three separate light sources that are combined to create a single beam that provides a full-color video display. The two claim terms that were central to the Board’s decision are: “Light-Shutter Matrix System” and “Video Controller Adapted for Controlling the Light-Shutter Matrices.”

Analyzing first the PTAB’s claim construction of “Light-Shutter Matrix System,” the Board noted at the outset that Patent Owner’s proposed interpretation was based upon: a) dictionary definitions of the terms “shutter” and “matrix”; and b) the disclosure of the term “shutter” from another patent’s disclosure. Based upon these sources, Patent Owner proposed a definition of “a two-dimensional array of light-shutter elements, in which each element can be used to shut or block out portions of a beam of light.”

The Board disagreed with Patent Owner’s compilation of dictionary definitions, however, and came to its own formulation of a claim construction for the Light-Shutter Matrices. Interestingly, in doing so, the Board relied upon its own dictionary definitions, but used those definitions to form a more broad definition of the subject term. The Board disagreed with Patent Owner’s proposed construction for two reasons. First, the definition relied upon by Patent Owner for “shutter” was directed to camera technology, not video projector systems. Order at 8. Second, Patent Owner’s definition from a prior art reference was deemed to be specific to a particular shutter, and not more generically described. As such, the disclosure was not indicative of how a person skilled in the art would understand the term generically. Order at 9.

The Board then turned to its construction of the “video controller” limitation. Though Patent Challenger did not offer a proposed construction (relying on the “broadest reasonable construction”), the Board did not accept Patent Owner’s specific proposal. That proposal, based on two other patents, was deemed not appropriate in this case. More particularly, the Board saw no need to look to other patents, especially since those patents did not use the full phrase of the claim, where the term “’video controller’ is a generic term of art.” Order at 10. As one would expect, the Board’s adopted construction was broader than that proposed by Patent Owner.

In the end, the Board initiated the IPR trial based upon two of the four proposed grounds. This is a decision that reinforces the Patent Challenger advantage of inter partes review practice, which relies on the broadest reasonable interpretation of the contested claim terms. Relying on that broad construction here, the Board read the subject claim terms onto prior art that, at first glance, is quite a bit different than the preferred embodiment of the ‘545 patent. As such, while a claim amendment might save the patentability of the claim, Patent Challenger may have successfully forced a narrowing of the subject claims (and reduced past damages?).

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.


Patent Owner Finally Wins! First Inter Partes Review Trial Denied

After running off a string of ten straight victories, a patent challenger faced its first setback in an inter partes review proceeding, as the Board declined to institute an IPR review against any of the 18 challenged claims in Synopsys, Inc. v. Mentor Graphics Corp. (IPR2012-00041), involving US Patent No. 6,947,882.  The Board considered all of the proposed grounds by Patent Challenger, but found that the “reasonable likelihood” standard had not been met (stay tuned…a second IPR petition, involving the same parties, resulted in the institution of a trial on a second patent).

The subject matter of the ‘882 patent is a system for emulating integrated circuit designs.  The key limitation upon which the Board focused was whether the claimed “independent” clock signal encompassed “asynchronous” clock signals.

The Board first noted that the Patent Challenger did not explicitly make the argument that independent encompasses asynchronous, but deduced that this was the thrust of Patent Challenger’s argument, based upon the claim charts and supporting argument from the petition.  The Board, however, agreed with Patent Owner that the term “asynchronous” was not synonymous with “independent.”  Order at 6.  In so finding, the Board relied upon the dictionary definition of “independent,” and found that nothing in the patent specification suggested that the term should be interpreted differently.

[pullquote align=”left|center|right” textalign=”left|center|right” width=”30%”]35 USC §315(d) – In determining whether to institute or order a proceeding…the Director may take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments were presented to the Office.[/pullquote]

After completing its claim construction analysis, the Board turned to a comparison of the challenged claims to the proposed art.  At threshold, the Board addressed Patent Owner’s argument that the art contained in the petition was already considered by the Office – an argument that has already proven to be popular among Patent Owner Preliminary Responses.  The Board found, however, that the petition’s arguments were not previously considered because the reference at issue was applied in a different way during prosecution vis-à-vis what was proposed in the petition.  Thus, the Board declined to ignore the proposed grounds solely on the basis that the art was previously before the Office.

But the Board ended up at the same conclusion anyway, finding that none of the proposed grounds met the reasonable likelihood standard.  At the outset, the Board considered the argument by Patent Challenger that sought to incorporate by reference the disclosure of a different prior art reference.  Because the ‘882 patent “unambiguously incorporated the entire…specification,” the Board found that the document became part of the host ‘882 patent, as if it were explicitly contained therein.  Citing Telemac Cellular Corp. v. Topp Telecom, Inc., 247 F.3d 1316, 1329 (Fed. Cir. 2001).  Despite that fact, the Board went on to find that the prior art did not anticipate because the reference failed to disclose the Board-construed “independent” limitation.  The Board had similar findings with regard to the other two references cited in anticipation arguments.

The Board also denied the grounds set forth in the petition relating to obviousness based primarily on the fact that Patent Challenger did not adequately explain its obviousness position.  Citing 35 USC §312(a)(3) and 37 CFR 32.104(b)(4), the Board found that Patent Challenger’s petition failed to identify with particularity each challenged claim, the grounds on which the challenge is based, and the evidence that supports that ground.  In short, Patent Challenger’s conclusory statements failed to meet the above-referenced standards to properly exceed the “reasonable likelihood” standard.

The Board’s decision not to initiate a trial in this inter partes review contained significant discussion that spoke more to the deficiencies of the petition, than to the strength of the challenged patent.  In any event, Patent Owners can be heartened by the fact that the Board is not merely rubber stamping each petition.  While the Board’s in depth analysis in its Orders initiating IPR trials made it clear that it was not working with a rubber stamp, the results spoke for themselves up to this point.

Ninth Inter Partes Review Trial Instituted

In the third of four inter partes review trials involving Intellectual Ventures and Xilinx, all instituted on February 12, 2013, the PTAB again has again instituted an inter partes review trial against a Xilinx patent, this time US Patent No. 8,058,897, in the IPR styled as Intellectual Ventures Management LLC v. Xilinx, Inc. (IPR 2012-00020).  As with the previous Orders (see, e.g., HERE), the Board in this IPR proceeding instituted the trial against all challenged claims, granting on four of the nine proposed grounds.

The subject matter of the ‘897 patent covers an integrated circuit that includes multiple dies, wherein a master die receives configuration data for both the master and a slave die.  The key limitations at issue in the Board’s ruling were the terms “integrated circuit” and “die,” with the Board holding that the ‘897 patent claims require a multi-die IC, where a die is a “single piece of silicon that contains one or more circuits and is or will be packaged as a unit” (relying on the “Authoritative Dictionary of IEEE Standard Terms” in coming to this conclusion).

In turning to the Board’s specific analysis of the proposed grounds of unpatentability, a few interesting points are revealed.  At threshold, Patent Owner chided the petition for failing to present prior art that teaches all of the claim elements, including a multi-die IC and, therefore, that the “proposed obviousness rejection” is incomplete.  The Board rejected this argument, finding that IPR proceedings are different than reexamination or continued prosecution in that no “proposed obviousness rejection” is to be made by the Board.  Regardless of how the counter-argument was phrased (it may have been better for Patent Owner to frame its argument that a prima facie case of obviousness had not been advanced), it is eye-opening that the Board accepted a 103 argument where each of the limitations were not found in the proposed combination of prior art.

To come to that obviousness conclusion, the Board remarked that Xilinx did not take into account the level of ordinary skill in the art.  The Board went on to articulate the appropriate level of ordinary skill in the art for this matter, and then went on to find that developing a multi-die IC would have been a matter of routine implementation given that level of ordinary skill.  As such, even though Patent Challenger advanced art that lacked this key limitation of the claims, citing the KSR decision, the Board found that “it would have been within the knowledge and skill set of a person of ordinary skill in the art” to arrange the dies on the same IC, creating a multi-die IC.  Order at 11.

It is also worth noting that the Board rejected, in its discussion relating to Ground 4 (Order at 14-15), the argument by Patent Owner that the Petition was defective for not providing a statement of the precise relief requested.  In a manner that rings of a motion for more definite statement before a district court, Patent Owner had argued that Ground 4 did not specifically articulate the relief requested.  The Board did not accept this argument, finding that Patent Challenger “has substantively provided an underlying explanation of how [the prior art] applied to claims 12-14.”  While the titles used by Patent Challenger may not have been representative of the precise nature it sought, the Board found that to deny Ground 4 based on the titles used would exalt form over substance.  In short, this portion of the decision is interesting because, for one of the very few times, the Board seems to giving some leeway as compared to a strict reading of the Trial Practice Rules.

In the end, the Board instituted the IPR based upon Grounds 1, 2, 4, and 9.  The Board denied Grounds 3 and 5-8, finding that they were cumulative in view of the other grounds that were granted.

At the risk of becoming repetitive, it is worth noting again that the Board did not rely upon the mere recital of “broadest reasonable interpretation,” but rather articulated a specific claim construction for the disputed terms.  Consciously or not, the Board is moving the battlefield for many inter partes reviews to claim construction.  While parties to IPR proceedings must take note of this strong trend, there are certainly risks (especially to patent owners) to articulating claim construction positions in these proceedings and this should be carefully considered when making claim construction arguments.