51 for 56: Two IPR Trials Granted, Despite Dozens of Grounds Being Denied as Redundant

All challenged claims of two Belden, Inc. patents, directed to a data cable, were forced into IPR trials in cases styled, Berk-Tek LLC v. Belden Inc. (IPR2013-00058 and IPR2013-00059), involving US Patents No. 7,977,575 and 7,135,641. The Patent Owner did not file a preliminary response in this case. Trial was instituted for all 34 claims of the ‘575 patent and all 22 claims of the ‘641 patent.

The patents are directed to a high performance data cable using twisted pairs of conductors. The cable incorporates an interior support around which the twisted pairs are disposed. The interior support is characterized as a “star separator” and has a center region with four “prongs or splines” extending from the central region. Twisted pairs of conductors are disposed within grooves or channels formed between the splines.

In the IPR2013-00058 case, Petitioner challenged 34 claims by asserting 86 anticipation and obviousness challenges, involving 16 different prior art references, that took over 8 pages of the decision to list. The IPR2013-00059 case involved 22 claims in which 16 separate challenge grounds were alleged based on 7 prior art references.

Because no special meanings were alleged by the Petitioner, and no preliminary response was filed wherein Patent Owner could assert its own construction of the claim terms, the Board simply stated that all claim terms of the ‘575 patent had their ordinary and customary meaning, and jumped right into an analysis of the challenge grounds. The Board dutifully waded through analysis of the maze of challenge grounds for 17 pages to address nine grounds that the Board felt involved the most important reference. These nine grounds provided a reasonable likelihood for success as to all challenged claims of the ‘575 patent. The Board then dismissed the remaining 77 challenge grounds as redundant. A similar analysis occurred in the IPR2013-00059 case as the Board set forth a straightforward analysis, dismissing numerous grounds as redundant.

In the end, the Board granted trial on all 56 challenged claim of the two patents. In general, petitioners are rightfully concerned that the estoppel provisions of Inter Partes Review proceedings militate towards including more grounds for unpatentability versus less.  The Board’s continued efforts to severely curtail the ultimate IPR trials, however, suggests that effort on the part of petitioners is oftentimes being wasted, especially here, when almost 100 grounds were deemed redundant and denied.

41 for 46: Two IPR Trials Initiated After Detailed Obviousness Analysis by Board

iStock_000000202778XSmallChimei Innolux Corporation (CMI), an early veteran of inter partes review proceedings, had two more petitions for granted. CMI was challenging two Semiconductor Energy Laboratory (SEL) patents in cases styled as Chimei Innolux Corp. v. Semiconductor Energy Lab. Co., Ltd. (IPR2013-00066 and IPR2013-00068), involving U.S. Pat. Nos. 7,876,413 and 8,068,204.  The IPR trials were granted based on all challenged claims of the subject patents.

The ‘413 and ‘204 patents relate to liquid-crystal display (LCD) devices with two opposing substrates bonded to each other with a sealant. More precisely, the two patents disclose a solution to the problem of non-uniform seals which create an uneven gap between the substrates and can lead to deterioration of picture quality. The patents also describe connecting two conducting lines in parallel through the insulating film of the device along with an adjustment layer.

At the outset of both decisions, the Board addressed Patent Challenger’s request that the Board intercede in Patent Owner’s pending patent application and take immediate jurisdiction over all related applications.  Order at 6.  Treating the request as a motion, the Board denied Patent Challenger’s request.  Simply, Patent Challenger did not show that the claims in the pending application were patentably indistinct from the claims at issue in the IPR and, as such, Patent Challenger had failed to show why the Board should intercede.  Id. 

Next, the Board rejected Patent Owner’s argument that inter partes review petitions were improper pursuant to 35 USC §325(d) because the prior art references were already considered during the prosecution of the applications leading to each patent. The Board stated that without demonstrating that substantially the same arguments were made both times, the inter partes review would not be improper. Next, the Board in each case evaluated 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. Because the Board did not find that SEL presented any persuasive evidence that these additional parties had any control over the IPR proceeding, it denied SEL’s contention.  More specifically, the Board might have been persuaded by evidence that the third parties authored the Petition, exerted control over its contents, provided funding for the Petition, etc.  CMI I Order at 9.

Having dispensed with SEL’s procedural challenges, the Board continued with a claim construction analysis, centering on the phrase, “contact through an opening,” and more specifically the definition of, “through.” SEL argued that the phrase meant, “made possible by (or by virtue of) the opening.” CMI did not submit its own interpretation, and the Board found SEL’s interpretation of the phrase to be consistent with the ordinary meaning of the phrase, in light of dictionary definitions of the term, “through.” (The American Heritage Dictionary of the English Language).

The Board then moved on to analyze Patent Challenger’s asserted grounds of unpatentability. In each case, Patent Challenger asserted all challenged claims were unpatentable as being obvious over two combinations of prior art references. Using an expert declaration from Patent challenger, the Board proceeded through a fairly straightforward obviousness analysis, concluding that in each case, the challenged claims were obvious over the prior art, with one of the two combinations of references in each case being denied as redundant. As has been previously seen, the Board showed a willingness to grant IPR trial on obviousness grounds using prior art that was already considered during the prosecution of the application that lead to the patent(s) in question.

In summary, the Board granted the petition of Patent Challenger as to all of the challenged claims in the ‘413 and ‘204 patent on obviousness grounds.

36 for 41: Workmanlike Board Decision Gets Patent Challengers Back in the Winning Column

iStock_000007197208XSmallIn a decision lacking in its typical flair, the Board has instituted an inter partes review trial for all challenged claims in a case styled Midland Radio Corp. of Florida v. Cobra Electronics Corp. (IPR2013-00021), involving US Pat. No. 6,584,306. Patent Challenger asserted 39 separate grounds of unpatentability, but the Board only authorized the trial on three grounds.  The Patent Owner did not file a Preliminary Response in this case.

The ‘306 patent is drawn to a “point-to-point” two-way radio system in which hand held walkie-talkies communicate without using a base station. Each walkie-talkie has a transmitter that transmits a call announcement signal and a separate voice signal. The voice signal is different from the call announcement signal and is transmitted over a fixed frequency range. Each walkie-talkie also has a receiver that receives the voice communications signal, a vibrator responsive to the call announcement signal, a vibrator responsive to the call announcement signal, an audible notification means responsive to the call announcement signal, and a switch for selecting an audible call announcement and a vibrational call announcement.

Starting with a claim construction analysis, the Board agreed with Patent Challenger that “switch” means a device for choosing among at least two options, and that none of the claim  terms should be construed as “means-plus-function” even though the term “means” appears in the claim. Taken in context, the claim is not limited to any particular structure disclosed in the specification. Order at 9. The Board also raised its own claim construction analysis for a term in the patent, relying on Webster’s New Collegiate Dictionary (1977) to define “separate” as “set apart or kept apart: not shared with another; dissimilar in identity” and “different” as “partly or totally unlike in nature, form or quality.” (It seems the Board’s decision may have erroneously listed the year as 1977 instead of 1997 – the priority date of the patent is February 1998, so a 1997 dictionary would be significantly more appropriate than one from 1977).

The Board then turned to an obviousness analysis, finding that two of the asserted references were missing a key limitation of the claims.  As such, the Board denied all other grounds that used either reference as the primary reference. In the end, the Board’s analysis did not contain any other notable tidbits, except the fact that the vast majority of grounds were denied as redundant.

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.

PTAB Drawing Fire for Denying Petition Grounds As Cumulative – Not Backing Down

As previously discussed here, we have found it interesting that the PTAB is denying grounds that are contained within a petition seeking inter partes review for the sole reason that such grounds are redundant or cumulative in light of other, granted grounds.  Such a practice has done well to limit the number of grounds that are to be considered during an IPR trial – through the first 6 months of IPR practice, only 38% of grounds from IPR petitions are ultimately included in the IPR trial – but is it proper for the Board to take this action?

The potential downside of this practice by the Board is easy to see – the estoppel that attaches at the end of an IPR trial means that all denied grounds will forever be lost to the Patent Challenger.  More specifically, after a final, written decision by the Board on an inter partes review petition, Patent Challengers will be estopped from asserting any grounds that were brought, or could have been brought, in the proceeding.  Consider the hypothetical of one ground in a petition being granted, but a second ground being denied because it is cumulative to the first ground.  Then, during the trial, the Patent Owner enters testimony or other evidence that convinces the Board to change its mind and the Board enters a final written decision upholding the validity of the patent-in-suit.  The Patent Challenger will have lost not only the first ground that was included in the trial, but also the second ground that was denied pursuant to the estoppel.  But what if that second ground would have succeeded? One would never know.

[pullquote align=”left|center|right” textalign=”left|center|right” width=”30%”]37 CFR §42.108(b) — At any time prior to institution of inter partes review, the Board may deny some or all grounds for unpatentability for some or all of the challenged claims.  Denial of a ground is a Board decision not to institute inter partes review on that ground.[/pullquote]

A couple Patent Challengers have recognized this issue and have begun pushing back on the PTAB regarding the decisions to deny certain grounds as cumulative or redundant.  For example, in the inter partes review styled as Schrader-Bridgeport Int’l, Inc. v. Continental Automotive Sys. US, Inc., IPR2013-00014, involving US Patent No. 6,998,973, Patent Challenger requested rehearing of the Board’s decision to institute an IPR trial, arguing that one of the denied grounds should be granted because such ground might be necessary as a fallback as the proceeding progresses.

Just today, however, the Board denied that request for rehearing, finding that the rules for instituting inter partes review proceedings take into account that the proceedings are to be timely and expeditious.  As such, the Board has the authority to limit the grounds contained in the trial.  Further, 37 CFR 42.108(b) allows the Board to “deny some or all grounds for unpatentability for some or all of the challenged claims.”  To succeed in a Request for Rehearing, the Board noted, Patent Challenger must have established an abuse of discretion and further that “[a]n abuse of discretion may be determined if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors.”  Citing Arnold Partnership v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004). Because none of these bases are present in the instant case, there can be no abuse of discretion and trial on only the narrowed number of grounds will proceed.  It should be noted that the Board did state that, had Patent Challenger provided reasons why a denied ground might be more relevant than a granted ground, the Board might have reconsidered.  Order at 4.

Relatedly, in Illumina v. The Trustees of Columbia University in the City of New York, IPR 2012-00006, involving US Patent No. 7,713,698, Patent Challenger also filed a Request for Reconsideration of the Board’s decision to institute an IPR trial, arguing that the Patent Rules do not authorize the Board to deny grounds because they are cumulative or duplicative.  Brief at 14.  Instead, argues Patent Challenger, the Board’s sole role is to decide whether a ground would meet the “reasonable likelihood of prevailing” standard and, if it does, it must be granted.  Id.

While the Board has not yet ruled on the Request by Illumina, the Schrader-Bridgeport decision seems to make clear that this particular fight is headed to the Federal Circuit.

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.