Expert Opinion on Claim Construction Must Include Evidence to be Given Weight by PTAB

Optical fibersCorning was successful in challenging 22 claims of a DSM IP Assets (DSM) patent in a case styled as Corning Incorporated v. DSM IP Assets B.V. (IPR2013-00053), involving U.S. Pat. No. 7,276,543.  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 which exhibit improved cure speed without increased sensitivity to yellowing over time.

In performing its claim construction analysis, the Board agreed with Patent Owner that only one of the submitted terms needed to be interpreted outside their normal meaning.  Accordingly, the Board set forth a detailed explanation of the lone claim term in dispute, “absorption maxima,” in which it found Patent Challenger’s construction overly broad. Central to the Board’s decision in this regard was the fact that Patent Challenger’s expert declaration, that purported to support Patent Challenger’s interpretation, did “nothing more than state the conclusion that ‘[a] skilled scientist would have recognized’ Patent Challenger’s construction was acceptable.  Order at 5.  The Board went on to instruct that a proper foundation for such an expert opinion on claim construction would include evidence upon which the expert based such a conclusion, or other objective evidence supporting the construction.  In the end, the Board seemed to give no weight to the conclusory declaration offered by Patent Challenger in this respect.  As such, the Board agreed with Patent Owner’s interpretation of an absorption maxima, citing the specification of the ‘543 patent which states that it “will be understood that λmax is a point on the curve wherein the tangent to the curve is parallel with the horizontal axis.”

Also interesting from the Board’s decision was its analysis of whether one of the prior art references cited by Patent Challenger did, in fact, qualify as prior art.  Patent Owner argued that the reference did not qualify because, at the time the invention was made, the prior art patent was commonly owned with the patent-at-issue.  The Board rejected Patent Owner’s argument because Patent Owner had not shown sufficiently that the two patents were commonly owned “at the time of the invention.”  Order at 10.  For example, the evidence cited by Patent Owner was dated after the filing of the application that became the ‘543 patent.  The Board did, however, note that, during the trial portion of the proceeding, Patent Owner would have the opportunity to provide additional evidence concerning ownership (including, presumably, testimony on the point).

The remainder of the Board’s opinion follows the format of earlier decisions on petitions brought by Corning that rely heavily on the inherent disclosure of prior art references.  Earlier posts related to those decisions can be found HERE and HERE.

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.

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.

Thirteenth Inter Partes Review Trial Instituted

Make it 13 out of 14 for patent challengers in reaching the “reasonable likelihood of unpatentability” standard for the institution of an inter partes review trial, per the Board’s decision in Sony Corp. v. Tessera, Inc. (IPR2012-00033), involving US Patent No. 6,054,337.  The Board initiated this trial based on two of the four proposed grounds and against all four of the challenged claims.

The technology claimed in the ‘337 patent relates to methods for making compliant multichip packages.  The two terms that were analyzed by the Board, and which form the basis of its opinion, are “traces”/“leads” and “adjacent to the periphery.”  We discuss below the interesting portions of the Board’s claim construction analysis, and the basis for the Board’s ultimate conclusion to institute an IPR trial regarding the ‘337 patent.

The crux of the parties’ disagreement regarding “leads” and “traces” relates to whether they are distinct structures, or whether they can be part of the same structure.  Patent Challenger sought the latter interpretation, whereas Patent Owner advocated that the terms were called out separately in the claims and must, therefore, be distinct structures.  The Board sided with Patent Challenger.  In addition to crediting the testimony of Patent Challenger’s expert, the Board also evaluated the specification of the ‘337 patent and determined that the disclosure therein made clear that the “flexible leads” can be part of the “conductive traces.”  In so deciding, the Board discarded Patent Owner’s argument that “conductive traces” need not be flexible, while “flexible leads” of course, must be flexible.  Because the claim did not exclude the “conductive traces” from being flexible, under the Broadest Reasonable Interpretation standard, the traces could be flexible and the claim construction must take that into account.

Regarding the second disputed claim term, “adjacent the periphery,” the Board noted that neither party provided an explicit claim construction for this terminology, even though the parties disagreed whether the prior art contained this limitation.  This is yet another signal from the Board that parties should give strong consideration to including claim construction positions in their arguments.

Having construed the contentious claim limitations, the Board turned to the grounds for unpatentability submitted by Patent Challenger.  In coming to its conclusion, the Board commented that Patent Owner’s non-obviousness argument was predicated on the erroneous claim construction it offered for “leads” and “traces.” As such, the second part of Patent Owner’s argument was undermined by the claim construction position adopted by the Board.  Was there a fallback position Patent Owner could have identified?  Such as, “even if Patent Challenger’s proposed construction is adopted….”

Lastly, it is worth noting again that the Board denied two of the four proposed grounds on the rationale that they were cumulative in light of the determination that there is a reasonable likelihood that the four challenged claims were unpatentable in view of the two granted grounds.  We wait with anticipation to see if the Board is ever challenged under this “cumulative” protocol it has adopted, which does not seem to have basis in the statute or practice rules.