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.

44 for 49: Innolux Continues Winning Streak With Additional Inter Partes Review Trial Initiation

iStock_000000202778XSmallInnolux Corporation (CMI), after filing a notice to drop the “Chimei” from its name, had yet another petition for inter partes review granted. CMI has had initial success in challenging nine claims of a Semiconductor Energy Laboratory (SEL) patent in a case styled as Innolux Corporation v. Semiconductor Energy Laboratory Co., Ltd. (IPR2013-00060), involving U.S. Pat. No. 7,697,102.

The ‘102 patent relates to an active matrix liquid crystal display (LCD). In more detail, the LCD has a thin-film transistor that controls voltage to pixel electrodes and extractor terminals which supply power, the latter of which are formed from the same metal layer as the pixel electrodes.

The Board began by considering 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. The Board did not adopt Patent Owner’s argument, however, finding that certain statements in pleadings filed with a district court in co-pending litigation was insufficient to prove that the non-listed parties had any control over the IPR proceeding.

The Board then moved to a claim construction analysis, tackling several terms in dispute and relevant to the patentability determination.  In general, the Board based its interpretation on the specification of the ’102 patent, with a strong dose of its mandate to rely upon the “broadest reasonable interpretation” of the claim terms.

Having construed the claims, the Board then analyzed Patent Challenger’s asserted grounds of unpatentability over two combinations of prior art references. In a straightforward obviousness analysis of the first combination of references, the Board did not find Patent Owner’s arguments for nonobviousness over the prior art to be persuasive and granted the petition of Patent Challenger. The Board declined to consider the second combination, based on admitted prior art, because the Board found it to be redundant.

In summary, the Board granted the petition of Patent Challenger as to all of the challenged claims in the ‘102 patent on obviousness 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.

39 for 44: Previously Considered Art Survives Again in Grant of Two Inter Partes Review Trials

The Board furthered its early reputation of providing thorough decisions regarding the institution of inter partes review trials, by digging into dependent claims of the challenged patents and allowing certain claims to survive in two cases styled ABB, Inc. v. Roy-G-Biv Corporation (IPR2013-00062 and IPR2013-00074), involving US Patent Nos. 6,516,236 and 8,073,557. The Board granted trial on 7 of 10 challenged claims for the ‘236 patent and 12 of 29 challenged claims for the ‘557 patent.

The patents relate generally to a system that facilitates the creation of hardware-independent motion control software. In particular, the patents describe a high-level motion control application programming interface (“API”) made up of functions that are correlated with driver functions associated with controlling a mechanical system that generates movement based on a control signal.

Patent Owner specifically addressed proposed interpretations of the terms “primitive operations” and “core driver functions.” Because Patent Challenger’s proposed interpretations for the other patent terms did not appear unreasonable, the Board adopted them “at this stage of the proceeding.” We emphasize this point because it reinforces other decisions by the Board that suggest that a Patent Owner can address claim construction issues again after an IPR trial has been initiated.  As to the term “primitive operations” the Board found that Patent Challenger’s proposed definition was overly and did not comport with an explicit definition provided in the specification.

The Board used a similar analysis in adopting the specification definition of “core driver functions,” against Patent Challenger’s argument that the term was too vague. Patent Challenger’s position “ignores the explicit definition in the claim language itself.”  As should be expected, the intrinsic evidence controlled regarding this claim construction issue.

Having addressed the claim construction issues, the Board turned to Patent Owner’s argument that a prior art reference was cumulative because it was considered during the original prosecution and Inter Partes Reexamination of the ‘236 patent. The Board rejected the argument: “While we are cognizant of the burden on the Patent Owner and the Office to rehear the same or substantially the same prior art or arguments that were considered by the Office in a prior proceeding, we decline to reject the petition solely on the ground that Stewart, a reference related to the operating system upon which Gertz’s system is based, is a member of an eight-page list of references on the ‘236 reexamination certificate.” IPR2013-00062 Order at 13.

Despite that minor victory, Patent Challenger’s anticipation arguments were then rejected because they failed to show that operations performed by control tasks in Gertz were “primitive operations,” as that term was defined by the Board, above. With regard to the grounds based on obviousness, the Board was not persuaded by the Patent Owner’s arguments that the Gertz reference taught away from using primitive operations. The Board did, however, find that limitations in dependent claims 5-7 were not disclosed by the proposed combination of references, preventing a finding of obviousness.  Specifically, the Board found Patent Challenger’s argument that the prior art disclosed the limitation contained in these claims to be lacking.  It is interesting to note that, in a footnote, the Board mentioned that although Patent Challenger asserted the limitations were disclosed by another reference, Patent Challenger did not assert a combination that included that reference as a ground of unpatentability. IPR2013-00062 Order at 17.

After completing its analysis, the Board granted trial on some, but not all of the challenged patent claims of both the ‘236 and the ‘557 patents. The Board’s claim construction analyses, which were based on the definitions disclosed in the specification (rejecting an argument that such definitions were vague) doomed some of Patent Challenger’s anticipation and obviousness challenges.

37 for 42: Previously-Considered Art Lives Again in Grant of Inter Partes Review Trial

iStock_000014464933XSmallThe Board has again failed to toss aside argument and art previously considered by the Patent Office (this time in an ex parte reexamination) and, instead, instituted an inter partes review trial on all six challenged claims in a case styled Nexans, Inc. v. Belden Technologies, Inc. (IPR2013-00057), involving US Pat. No. 6,074,503. Four of 9 proposed grounds for challenge were granted in the Board’s decision.

The invention of the ‘503 patent involves a method of producing a cable. The method includes a step of passing a plurality of transmission media such as wires and a core through a first die which aligns the plurality of transmission media with surface features of the core and prevents twisting motion of the core. The method includes another step of bunching the aligned plurality of transmission media and core using a second die which forces each of the plurality of transmission media into contact with the surface features of the core. The bunched plurality of transmission media and core are twisted close to the cable, and the closed cable is jacketed.

Patent Owner first argued that because three of the references contained in the petition were already considered by the examiner in a prior ex parte reexamination which resulted in confirmation of the claims, the Board should deny those portions of the petition. The Board cited 35 U.S.C. § 325(d) and stated the statute gives the Director the authority not to institute review on the basis that the same or substantially the same prior art or arguments were presented previously to the USPTO, but does not require so. Because the Patent Challenger’s alleged unpatentability grounds have some merit, the Board declined to deny the petition under 35 U.S.C. § 325(d). Order at 8. This continues a trend of the Board’s willingness to consider references even if they were previously considered during original prosecution or a reexamination.

The Board then turned to its claim construction analysis and interpreted the terms “core” and “prevents twisting motion of the core.” Basing its definition of “core” strictly on the specification of the ‘503 patent, the Board found that the term “core” does not have to have a bulky or extensive cross-section and there is no reason to exclude structure in the form of thin tape from forming or constituting the core. The Board also determined that “prevents twisting motion of the core” was met by the prevention of twisting in the area where the core passes through the first die once the desired position of the core for alignment during production is established. Thus, twisting of the core need not be prevented (1) at all places along the axial length of the core, or (2) before the desired alignment of the core has been determined and put in place and cable production has commenced.

The Board then considered several grounds asserting anticipation of the challenged claims.  To that end, Patent Challenger argued that a prior art reference disclosed a branching board of a first die which inherently prevented twisting of the core. The Board rejected the argument, stating that because the disclosure does not show an axial view of the branding board in the direction of cable feed, it could not be known what manner the core passes through the branching board. To establish inherent disclosure, the limitation at issue necessarily must be present in the corresponding element described in the prior art reference. Inherency may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient to establish inherency. Order at 26. The Board found that even if the branching board, in some circumstances, prevented twisting of the core, the possibility is inadequate to establish inherent disclosure of twist prevention.

In the obviousness challenge grounds analysis, the Board determined that inserting an additional die upstream of a wire-splitting board of the assembly of a prior art reference involved merely a predictable use of a prior art element disclosed in other references.  Further, Board held that such a combination need not be predicated on any specific teachings; that is, the Board “need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” Order at 33.

Patent Owner sought exclusion of one of the Patent Challenger’s exhibits on the ground that it constituted inadmissible hearsay. The exhibit is a collection of selected trial transcripts from related litigation, including the testimony of an expert witness. The Board stated that exclusion of evidence at this stage of the proceeding is premature. Order at 41. In any event, the exhibit appeared to have been relied on by the Patent Challenger only in connection with arguments regarding a reference that was not applied as a basis for any granted challenge grounds.

In the end, the Board instituted trial on all challenged claims including, notably, some challenge grounds that used a reference that was previously considered during an ex parte reexamination.

35 for 37: Partial Victory for Patent Owner As Board Puts Some, But Not All, Claims into IPR Trial

iStock_000013398807XSmallIn recent decisions, the Board has had a soft spot for Patent Owners.  Shortly after denying only the second petition for inter partes review, as previously discussed, only 29 of 40 challenged claims were put into an inter partes review trial in the case styled MicroStrategy, Inc. v. Zillow, Inc. (IPR2013-00034), involving US Pat. No. 7,970,674.

The ‘674 patent is directed to the field of electronic commerce techniques related to real estate. The ‘674 patent discloses an approach where valuing homes is responsive to owner input, allegedly resulting in a more accurate, inexpensive, and convenient valuation.

The Board first addressed a claim construction dispute between the parties involving the term “user knowledge about the distinguished home.” Patent Owner advocated a narrower construction limited to “the owner or a person with equivalent knowledge to the owner,” apparently trying to avoid prior art references directed more towards agents. The Board was not persuaded.  Relying primarily on the specification, the Board determined that such a “user” could be any person “knowledgeable about the distinguished home” and was not limited to the owner.  Order at 9-10.  Relatedly, the Board went on to construe “owner of a home” and “new geographically-specific home valuation model” based primarily on the specification of the ‘674 patent.

Turning to the specific grounds of challenge, the Board first granted two anticipation grounds after rejecting Patent Owner’s arguments that one or more limitations was missing. A related obviousness challenge, based on the 102 reference in combination with an additional reference, was denied as redundant. Order at 13. It will be interesting to see what will happen if the Board is later convinced that the anticipating reference does not contain all claim limitations.  Given the Board’s reluctance to date to grant any rehearing request, maybe this possibility is extremely remote.

The Board next proceeded through analysis of the remaining obviousness challenge grounds. In some instances the Board found a reasonable likelihood of prevailing, but other times the Board was unpersuaded because of opposing arguments presented by Patent Owner in its Preliminary Response.  For example, for certain of the challenged claims, Patent Owner successfully argued that Patent Challenger’s combination of references still failed to disclose an element of the challenged claim. Order at 18-19.  On the flip side, grounds for other claims were granted where the Patent Owner “did not set forth any reason as to why [Patent Challenger’s] arguments were unpersuasive.” Order at 23, 25.

After completing its detailed obviousness analysis, the Board granted trial on some, but not all of the challenged patent claims. For some claims, the Board found Patent Challenger’s arguments to be more persuasive, but for other claims, Patent Owner’s silence in its Preliminary Response was deafening. Indeed, Patent Owner’s strong arguments that persuaded the Board to not grant some grounds seemed detrimental to Patent Owner’s interests with regard to other grounds.  That is to say, the Board treated Patent Owner’s silence as a kind of acquiescence to Patent Challenger’s arguments.

19 for 20: Tire Pressure-Monitoring Patent is 19th Put Into Inter Partes Review Trial

OLYMPUS DIGITAL CAMERASchrader-Bridgeport was successful in forcing a patent owned by Continental Automotive Systems US into an inter partes review trial, in the case styled as Schrader-Bridgeport International, Inc. v. Continental Automotive Sys. US, Inc. (IPR2013-00014), involving US Patent No. 6,998,973.  The Board granted the IPR trial based on all 10 challenged claims and on one of 9 grounds for challenge.

The subject matter of the ‘973 patent involves a data transmission method for a tire-pressure monitoring system of a vehicle.  More particularly, the method prevents data collisions from the various wheel units of an automobile through the use of internal clocks in each wheel unit.  The main dispute between the parties involved the last clause of independent claim 1, including the terms “natural time lag” and “used to prevent collisions.”

Starting with the step of claim construction, the Board noted that Patent Challenger’s claim construction of “natural time lag” corresponds to a position taken by Patent Owner in concurrent district court litigation.  That definition, which Patent Owner urged the Board to adopt for purposes of this IPR, comprises “sensors with any amount of imprecision, even lower than +/- 1%, creates a sufficient ‘natural lag’ to be covered by the claim.”  Because the Board could not discern how this definition aligned with a litigation position, or why the +/- 1% limitation should be included, it found that the proposed construction was overly broad in light of the patent specification.  Instead, the Board looked to the specification and found that one of ordinary skill would have understood that term to mean that tolerance of the clocks is sufficiently poor so as to automatically and randomly induce time shifting of transmission from the clocks.  Order at 8.

Turning to the term “used to prevent collisions,” the Board agreed with the definition proposed by Patent Challenger; namely that the occurrence of collisions is reduced. All other terms in the challenged claims were given their ordinary and customary meanings.  Id.

Having construed the above-two terms, the Board turned to the issue of anticipation, noting that Patent Challenger’s arguments relied upon implicit disclosures.  That is, Patent Challenger relied upon inherency.  Order at 10.  With regard to the first reference at issue, the Board found that Patent Challenger’s inherency argument neglected to consider the entirety of the teachings of the reference.  In light of that more complete analysis, the disclosure would not necessarily function in a manner consistent with the claimed invention.  MEHL/Biophile International Corp. v. Milgraum, 192 F.3d 1362, 1365 (Fed. Cir. 1999) (“Inherency” requires that a given fact must necessarily result, and not be established based on mere probability or possibility).  Order at 12.  Relatedly, the Board found that the second reference upon which Patent Challenger asserts under an inherency theory was similarly insupportable.  Order at 13.

The Board was more persuaded, however, by Patent Challenger’s grounds for challenge based on obviousness.  The Board’s analysis overcame Patent Owner’s arguments that the combinations at issue were: 1) based on non-analogous art, 2) taught against the combination, and 3) there was “no reason” to combine.  With respect to the non-analogous art argument, the Board found that, while the art may not have been in the same field of endeavor, the test for whether a reference is analogous could, alternatively, be based on the fact that the reference is reasonably pertinent to the particular problem at issue.  Wyers v. Master Lock Co. 616 F.3d 1231, 1238 (Fed. Cir. 2010).  Order at 17.

The Board also found the “teaching away” argument to be unavailing.  Order at 18.  While the art at issue may recognize a particular preferred benefit, the reference did not criticize, discredit, or otherwise discourage investigation into other viable benefits.  DePuy Spine Inc. v. Medtronic Sofamor Danek, 567 F.3d 1314, 1327 (Fed. Cir. 2009).  Lastly, the board denied that there was “no reason” to combine the teachings of the subject references.  Because the combination constituted implementing known teachings concerning the basic technology at issue, this reasoning by Patent Owner was not given weight.  Order at 18-19.

In the end, the IPR trial was instituted based on a number of obviousness grounds.  Other grounds, deemed redundant to the above-discussed grounds, were denied.  Interestingly, the Board did provide additional background on this point, as compared to earlier decisions.  Specifically, the Board suggested that, if it did not succeed on the grounds put into the trial, Patent Challenger would likely fail with regard to the other grounds, as well.

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.