Board Adopts Claim Construction that is Even Broader than that Proposed by Petitioner

iStock_000015178749XSmallIn two challenges of the same patent, Nuvasive was able to get a total of 30 challenged claims of a Warsaw Orthopedic patent into separate trials for inter partes review, in cases styled as NuVasive, Inc. v. Warsaw Orthopedic, LLC (IPR2013-00206 and IPR2013-00208), involving U.S. Pat. No. 8,251,997.

The ‘997 patent relates to “methods and instrumentation for performing surgery on the spine along its lateral aspect.” The method involves insertion of a guide pin, which serves as a guide post for a distractor, over which is placed an extended outer sleeve.

The Board’s claim construction analysis included the rejection of Patent Challenger’s claim construction proposal for “a single elongated portion removable attached to said distal end of said third surgical instrument,” which had required that the elongated portion include a ring structure. The Board found that this would have required the improper importation of features from an embodiment into the claims, without justification for such importing.  2013-00206 Order at 7.   Similarly, the Board refused to include the term “transiently” in its construction of the phrase “positioning a single elongated portion removably attached to said distal end of said third surgical instrument over the disc space.” Again, there was no justification for importing a time limitation into the claim construction.  Id. at 8.  It is hard to know the interaction of infringement and validity issues that underlie this IPR proceeding, but it is interesting that the Board adopted claim construction positions that were even broader than those proposed by Patent Challenger.

Turning to the merits of the petitions, the Board noted Patent Owner’s contention that Patent Challenger had previously litigated the identical issues presented in the Petition regarding invalidity, but with respect to a related patent, not the patent-at-issue.  The Board indicated that Patent Owner failed to demonstrate that the issues were addressed in a trial regarding the ‘997, or that the claims were identical in both the ‘997 patent and the litigated patent.  As such, at this stage of the proceeding, the Board was unable to discern whether the issues litigated were the same as those set forth in the Petition.  It seems clear, however, that the Board has left the door open for Patent Owner to present additional evidence on this issue in its formal response to the Petition.

The remainder of the Board’s analyses comprised a methodical application of the long claims-at-issue to the prior art of record.  Thus, in a pair of detailed analyses, Nuvasive was able to get a total of 30 challenged claims of the ‘997 patent into two separate trials for inter partes review.

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.