Patent Owner’s IPR Statements May Constitute A “Disclaimer” of Claim Scope In Litigation

33513289_sIt is well-established that a patent owner’s statements about a claim term made during prosecution can be viewed as a disclaimer of claim scope during the Markman phase of litigation. Similarly, clear and unambiguous statements made in the patent specification can restrict claim scope during litigation. Several district courts have now followed suit with regard to statements made by a patent owner in an IPR proceeding, including the District Court for the Northern District of California in the recent case Aylus Networks, Inc. v. Apple, Inc., Civil Action No. 13-cv-04700.

In Aylus, the patent-in-suit was directed to a media streaming architecture that permitted a user to coordinate the transfer of media content from an internet-based server to a physically-proximate media renderer. Aylus asserted the patent against Apple’s AirPlay feature of its iOS devices. Independent claim 1 recited a method of controlling and delivering media content by invoking “Control Point” logic and “Control Point Proxy” logic to cooperatively negotiate media content delivery under certain conditions. Claim 2, which depended from claim 1, recited that the “Control Point Proxy” logic is invoked to negotiate media content delivery under other conditions.

During the litigation, Apple filed a Petition for Inter Partes Review of the patent-in-suit. In its Preliminary Response, Aylus argued that claim 2 requires that “only” the Control Point Proxy logic is invoked under the conditions described in claim 2. Aylus was successful in avoiding institution of trial on claim 2.

In the litigation, the District Court later construed claim 2 to require that “only” the Control Point Proxy logic be invoked, which ultimately led the court to find non-infringement in favor of Apple on summary judgment. The district court’s claim construction was based upon traditional claim construction factors, including assessing the plain language of the claim and the teachings of the patent specification. The district court also relied upon Aylus’ arguments in its Preliminary Response in the IPR. The district court noted that IPRs are technically adjudicative proceedings, rather than prosecution, but nonetheless considered Aylus’ Preliminary Response statements to constitute a “prosecution disclaimer.”

Though there has been no Federal Circuit opinion on this topic yet, several district courts have viewed statements made during an IPR as disclaimers, akin to similar statements made in the specification and during actual prosecution, when it comes to claim construction during litigation.

Motorola Mobility Takes Down Another Patent Via Inter Partes Review

iStock_000017334347XSmallThe early promise of the potential of inter partes review proceedings for patent challengers is proving out, as another petition results in the unpatentability of all challenged claims in Motorola Mobility LLC v. Arnouse Digital Devices Corp., IPR2013-00010 (Paper 45).

Unsurprisingly, the basis of the Board’s opinion lie in its claim construction analysis. Patent Owner sought narrow constructions in an attempt to save its claims, to no avail. First, Patent Owner failed to obtain a construction for “connector for connecting” that included a reader slot or hole. In the specification, some embodiments required such a slot or hole, but others did not.  As such, the Board found that, reading that limitation into the claims would not result in the broadest reasonable interpretation.  Order at 6-7.  Further, in dicta, the Board went on to comment that, even if the slot/hole embodiment was the only embodiment in the specification, the Board might not construe the claim to require such slot or hole.  Order at 8.

The second key claim construction issue in the decision related to the interaction of Patent Owner’s proposed claim construction in the inter partes review, as compared to the claim construction it advocated before the district court in related litigation.  In general, the construction offered in the IPR was more narrow than that offered to the district court.  Order at 9-10.  It was interesting that the Board, at least partially, relied on that fact – past decisions have seen the Board ignore what has happened at the district court.  One possible explanation is the fact that Patent Owner’s proposal could not possibly be the “broadest reasonable interpretation” when it was more narrow than that advocated by Patent Owner in the related proceeding.

In the end, these claim construction decisions doomed Patent Owner’s challenged claims, resulting in a finding that all challenged claims were unpatentable.

Petitioners Strike First: PTAB Issues First Final Decision – Claims Unpatentable and Motion to Amend Denied

Business Finish LineWe finally made it!  Almost 16 months after Garmin kicked off this fun IPR roller coaster we have been riding, the PTAB has issued its first Final Written Decision, finding that all three claims-at-issue in the IPR trial styled as Garmin Int’l, et al., v. Cuozzo Speed Tech. LLC, IPR2012-00001 (Paper 59), involving U.S. Patent No. 6,778,074, are unpatentable and that Patent Owner’s motion to amend is denied.

By way of brief procedural history, Petitioner initially sought an IPR trial on 20 claims of the ‘074 patent.  In its decision to institute the trial, however, the Board found that there was a reasonable likelihood of unpatentability with respect to 3 of the 20 challenged claims.  Of course, as the trial progressed, this case gave us the now ubiquitous Garmin factors for proving the required “good cause” to obtain additional discovery.

Turning to the actual decision, we note that the details of the technology involved, and other aspects of the ‘074 patent, were set forth in the Decision to Initiate.  As such, we focus here on what struck us as the most interesting aspects of the Board’s Final Written Decision:

  • In general, the Board’s extensive 50-page decision is detailed, well-sourced, and unambiguous.  The Board refers often to relevant Federal Circuit case law and to the record (such as deposition testimony, briefing, and oral hearing argument) as part of a methodical treatment of all the defenses raised by Patent Owner.
  • The meaning of the term “integrally attached” was a key component of both the Decision to Initiate and the Final Written Decision.  The Board did not change its definition from its initial decision to the final decision, despite Patent Owner’s strong opposition thereto (including at oral argument).
  • While ostensibly working under the “broadest reasonable interpretation” claim construction standard, the Board’s analysis mimics that engaged by a federal court – relying on the intrinsic evidence of the ‘074 patent.  There is nothing discernible from the decision that would indicate how a district court would have come to a different claim construction analysis than that adopted by the Board, despite the ostensibly different standards.
  • In coming to its claim construction decision, the Board discounted the expert testimony provided by Patent Owner because that testimony, regarding what one of skill would have known, was vague.  The Board could not discern “just how much is deemed to be described by the disclosure itself, and how much is filled-in or completed by one with ordinary skill in the art, who possesses ordinary creativity and is not an automaton.”  Order at 14. Further, “[w]hat would have been obvious to one with ordinary skill in the art does not establish what actually is described in the specification.”  Id.  This is an ongoing theme with the Board in their consideration of expert testimony – mere allegations that mimic attorney argument are not enough, even if coming through the mouth of an expert. The Board is requiring a detailed and factual basis for the opinions of these experts.
  • Patent Owner sought to constrain the Board’s construction of “integrally attached” by referring to a district court case that construed “integrally connected.”  The Board explained why the terms were different, in the context of this IPR, but also more broadly suggested that comparison of two terms from different proceedings will not be given much weight in the future.  To that end, the Board pointed out that the patents had different disclosures; the field of invention is not the same; the level of ordinary skill in the art was different; the context in which the terms were used in the claims was not discussed by Patent Owner; and, of course, the terms “connected” and “attached” are different.  Order at 16-17.
  • The Board engaged in an extensive discussion relating to the priority date of the invention, including evidence of earlier conception and reduction to practice.  Among that evidence included a denial of Patent Owner’s use of a speeding ticket as corroborating evidence: “Exhibit 3001 corroborates only that the inventor received a speeding ticket on November 28, 1999, not anything that [inventor] conceived on that day.”  Order at 21.  As to other purported corroborating evidence, Patent Owner did not offer the testimony of a witness who purportedly signed the document and did not properly establish the document as a business record.  Order at 23.
  • The Board went on to discuss the inventor’s reasonable diligence in reducing his invention to practice, finding inadequate justification for two periods of “little activity” – one period spanning 2 months, and the other spanning 5 months.  Order at 25.  As a cautionary note, the Board found that Patent Owner’s excuse for the delay – a difficulty in obtaining money to file for patent protection – may have been satisfactory.  In this case, however, the delay was deemed too long because Patent Owner did not adequately explain such difficulties in obtaining the required money.  Order at 27.  Again, the lack of a factual basis for a position.
  • The Board’s ultimate comparison of the properly construed claims to the prior art was similar to the analysis from its Decision to Institute.  Ultimately, having decided the “integrally attached” claim construction issue, the art disclosed each element of the challenged claims and the Board did not accept Patent Owner’s teaching away arguments.
  • Lastly, the Motion to Amend Claims was denied by the Board because the amended claims did not have adequate support in the specification.  Failing the written description requirement of 35 USC § 112, ¶1, the motion was denied.

In the end, the Board’s first Final Written Decision contains few surprises.  As has been the case in their decisions to institute, and other ancillary decisions, the Board undertook a thorough job of examining the merits, took unambiguous positions on those merits, and rendered a decision that is comprehensive and detailed.  Next stop on this IPR ride: the Federal Circuit.

Board Gives No Deference to District Court Litigation Claim Construction in Denying IPR Petition

iStock_000003752861XSmallIn a rare Patent Owner victory, Sony and Axis Communications were unsuccessful in placing any of the 3 challenged claims of a Network-1 Security Solutions patent into a trial for inter partes review in a case styled as Sony Corp. of Am.; Axis Comm. AB; and Axis Comm., Inc. v. Network-1 Security Solutions, Inc. (IPR2013-00092), involving U.S. Pat. No. 6,218,930.

The ‘930 patent relates to “the powering of 10/100 Ethernet compatible equipment,” and more specifically, “automatically determining if remote equipment is capable of remote power feed.” Further, the patent states that, “if it is determined that the remote equipment is able to accept power remotely then [power will be provided] in a non-intrusive way.”

The Board began with an in-depth claim construction analysis, construing four claim terms.  Interesting in this analysis is how the Board gave no deference to positions taken by the Patent Owner in co-pending litigation, nor did it give deference to the district court’s claim construction rulings in that litigation.  Of course, the district court and PTAB have different claim constructions standards, but a gap has seemingly opened up that allows a Patent Owner to make different claim construction arguments in various proceedings.  For example, the ‘930 patent was actually involved in two prior district court proceedings and for several of the claim terms, Patent Owner argued one definition in one litigation, a second definition in the second litigation, and now a third definition before the Board.

Relatedly, it is not surprising that, as the Board turned from claim construction to its analysis of the proposed challenged grounds, the above claim constructions played a key role in the Board determining that a reasonable likelihood that one or more claims was unpatentable was not met.  With regarding to several grounds, the Board determined that one or more limitations was missing based on the Board’s prior interpretation of the claim terms.  See, e.g., Order at 23.  Further, the Board was unimpressed with Petitioner’s characterizations of the art of record.  In short, doomed by those mischaracterizations, Petitioner was unable to get any of the 3 challenged claims of the ‘930 patent into a trial for inter partes review.

Lastly, it is worth noting that Patent Owner tried to get the Petition summarily dismissed by arguing that Petitioner failed to meet comply with 37 CFR §42.104(b), by failing to set forth claim construction positions. The Board did not reach the issue, though, stating instead that the petition was denied on the merits anyway.  Stay tuned for confirmation of whether a Petitioner’s mere reliance on previous Patent Owner litigation positions as its claim construction argument is sufficient in IPR proceedings.

Board Refuses to Subject Indefinite Claims to Inter Partes Review Trial

In a rare denial of a petition seeking inter partes review, the Board denied a petition filed by against a Universal Electronics patent in a case styled as Universal Remote Control, Inc. v. Universal Electronics, Inc., IPR2013-00152 (Paper No. 8), involving US Patent No. 5,614,906.

In total, four claims of the ‘906 patent were challenged, pursuant to 8 grounds of unpatentability.  Based on the Board’s claim construction for a key term of the patents, many of the grounds were denied because the prior art was deemed to be missing a limitation of the challenged claims.

Most interesting in the Board’s decision, however, was its denial of the grounds relating to Claim 16 – a claim that contained numerous means-plus-function limitations.  In attempting to construe three means-plus-function limitations of that claim, the Board found, in each instance, that there was no structure disclosed in the specification that corresponded to the function recited in the claim.  See, e.g. Order at 12.  In effect, the Board determined that the claims were hopelessly indefinite.

A Petitioner cannot, of course, challenge the validity of a patent claim under 35 U.S.C. § 112.  How did the Board reconcile this indefinite claim with a request for a finding that the claim was unpatentable under §§ 102 and 103?  They denied the Petition!

“A lack of sufficient structure under 35 U.S.C. § 112, sixth paragraph renders a claim indefinite, and thus not amenable to construction.”  Order at 20.  As such, the Board concluded that the information presented in the Petition does not show that there is a reasonable likelihood that the Petitioner would prevail in its challenge.

It is worth noting that the claim at issue in this decision had already been found indefinite by the district court, as a matter of law.  Two weeks prior to the filing date of the petition, the court in the underlying litigation issued an order invalidating the claim.  While it is unclear why the Petitioner would seek to challenge in the inter partes review a claim that had already been invalidated, the Board’s decision was likely significantly impacted by this court decision.

29 for 30: §112 Challenges to Priority Date Considered in Institution of Inter Partes Review Trials

3D atoms backgroundNissan successfully forced two inter partes review trials (HERE and HERE) against patents owned by the University of Texas in cases styled as Nissan N. Am., Inc. v. Board of Regents, The University of Texas System (IPR2012-00035 and IPR2012-00037), involving US Patent Nos. 5,411,797 and 5,478,650.  All challenged claims were put into trial in each case.

The subject matter of the ‘797 and ‘650 patents is directed to amorphous or diamond-like materials that are substantially free of graphite and hydrogen, which are especially suited for use in the electronics industry due to desirable properties such as physical hardness, electrical strength, high thermal conductivity, and optical transparency.  Given the substantial overlap in the Board’s discussion of these two patents, the decisions instituting an IPR for each patent are discussed together below.

The Board started with a claim construction analysis and agreed with prior District Court constructions that were submitted by Patent Challenger and surprisingly supported by Patent Owner. Next, the Board addressed the Patent Owner’s argument that the Patent Challenger’s expert declaration was unsupported by any underlying facts and inconsistent. The Board agreed and stated that it would give the declaration “little, if any, weight,” which signals a warning to future Patent Challengers to be careful that their expert declarations are factually supported and do not contain inconsistencies.

The Board next addressed Patent Challenger’s argument that the ‘797 and ‘650 patent claims were not entitled to a priority date of an earlier filed application. The Board conducted a Section 112 analysis solely to determine whether some of the cited references were “prior art.” The Board considered three separate limitations and determined that there was not sufficient disclosure in the earlier filed application for two of the limitations. For example, “the broad disclosure of ‘less than 1000 Angstroms’ for the diameter of the fine-grained clusters disclosed int he ‘155 Application does not necessarily provide support for the less than 500 Angstroms or less than 200 Angstrom limitations recited in the claims.”  Order at 10.  Patent Owner was, therefore, not entitled to the benefit of the priority filing date based on those two limitations. Although inter partes review is limited to Section 102 and 103 grounds of invalidity, Patent Challengers may argue against claims to priority filing dates and the Board will be willing to hear them.

Turning to the patentability analysis, the Board separated its analysis of the prior art references based on the contested priority date, but ended up finding a reasonable likelihood of success based on references from both before and after the contested priority date. The Board granted trial on some anticipation grounds, but denied others as redundant. Interestingly, Patent Challenger made a statement at the end of the description of each challenge that if the Board did not find anticipation as to any of the references, the Board should consider Section 103 grounds of unpatentability based on some combination of the other cited references of record. However, the Board found this to be a failure to present a sufficient obviousness challenge because no limitations were identified with any specificity.

In the end, the Board granted trial on all three claims of each of the ‘797 and ‘650 patents based on multiple anticipation grounds, from both before and after the contested priority date, but denied other 102 grounds as redundant and denied 103 grounds as lacking any specificity. Among the lessons learned here are: (i) that expert opinions should be factually supported and consistent, (ii) that priority filing date claims can be contested, and (iii) that Section 103 grounds should be challenged specifically and not generally.