The Order issued in the second of four inter partes review trials involving Intellectual Ventures and Xilinx, styled as Intellectual Ventures Management, LLC v. Xilinx, Inc. (IPR2012-00019), relating to U.S. Patent No. 8,062,968, closely parallels the decision instituting a trial in IPR2012-00018, involving the same parties. Again, all challenged claims were included in the trial, based on six of the 18 proposed grounds for invalidity. The remaining 12 grounds were analyzed, but deemed to not have met the reasonable likelihood standard, so were denied.
In general, the rationale for instituting the trial was very similar to the rationale articulated in the previous Order, including the same claim construction issues and largely the same discussion of the challenged claims vis-a-vis the prior art. As such, we do not repeat that analysis here, and merely refer you to our prior report.
In the end, however, its 8-for-8 for patent challengers to date.
The last four PTAB Orders from February 12, 2013, that instituted inter partes review trials, were all related to the large battle underway between Xilinx and Intellectual Property Ventures Management. We will take them in order, first looking to the Board’s decision to institute an IPR trial in Intellectual Ventures Management, LLC v. Xilinx, Inc. (IPR2012-00018) (J. Arbes), relating to US Patent No. 7,566,960. In that Order, the board denied the proposed ground that sought a finding of unpatentability based on anticipation, but granted the trial on four separate obviousness grounds that covered all 13 challenged claims.
The subject matter of the ‘960 patent was an “interposer disposed inside an integrated circuit package between a die and the package.” Order at 2. The Board’s analysis focused on the only really interesting portion of the opinion–claim construction. To that end, the Board first considered the limitation of the claims that required “an array of landing pads disposed on an inside surface of the integrated circuit package.” Order at 8. While petitioner did not proffer a definition of this claim limitation, Patent Owner suggested that the limitation required the IC package to “completely surround” both the IC die and landing pads. The Board rejected this proposal on a number of grounds: 1) the language of the claim itself did not indicate such a relationship, 2) the specification did not disclose an intent on the part of Patent Owner to define the “inside surface” language consistent with Patent Owner’s proposal, 3) while one embodiment of the specification supported Patent Owner’s position, there was no reason to limit the claim as Patent Owner suggested; indeed, the term “surround” only appeared in the patent on one occasion, relating to a different context, and 4) while an argument made in prosecution was consistent with Patent Owner’s definition, the Board did not find that such argument was an express or clear disclaimer of a broader construction.” (for those litigators used to relying heavily on the file history to define a claim term, this has to be an eye opener). Order at 9-10. In short, in view of the broadest reasonable interpretation, Patent Owner’s proposal was incorrect.
The Board also construed the limitation “means for electrically coupling,” finding that because the word “means” was used, and no structure was recited tin the claim as performing the electrical coupling, the term was subject to 35 USC §112(f). As compared to other, more cursory means-plus-function analysis in other Orders, in the its analysis here, the Board undertook a detailed analysis of the specification in coming up with its proposed corresponding structure.
In view of the Board’s claim construction positions, it went on to find that Patent Challenger presented arguments that made it reasonably likely that all challenged claims were unpatentable in view of 4 of the 9 grounds proposed in the petition.