PTAB Addresses Issue of Whether IPR Prior Art is Enabling

25454742_sA “Hail Mary” of sorts, for Patent Owners, in their fight to defend the patentability of a challenged patent, can be an argument that a particular prior art reference is not relevant to the patentability analysis because it is not enabled. The Patent Owner in Google Inc. and Apple Inc., v. Jongerius Panoramic Technologies, LLC, IPR2014-00191, involving US Pat. No. 6,563,529, tried this strategy, and failed, on the way to the Board finding that all of its challenged claims were unpatentable. Order at 36-40.

The ‘529 patent relates to an interactive virtual tour system that displays a detailed view and a map view of a location, simultaneously. Of particular importance to this decision was the feature of a “directional indicator.” Patent Owner challenged one of the prior art references-at-issue in the Petition, arguing that it could not be considered prior art because it did not have sufficient detail regarding the directional indicator to be considered an enabling reference. Order at 36. To that end, Patent Owner argued that the reference did not provide enough detail to carry out the invention described in the ‘529 patent. Petitioner countered by arguing that the reference was a technical paper with citation to many other references, and a person in the target audience of the paper (i.e., those familiar with panorama visualization techniques) would know to read the cited references in the paper for proper explanation regarding the implementation of the technology.

The Board first noted that prior art references are presumed to be enabling. Further, the Board found that the level of ordinary skill in this particular art is advanced and, in light of the fact that the technical paper reference targeted an audience of people familiar with the field of the invention, not the general public, the Board found the reference enabled. Order at 38. The Board also went out of its way to note that the reference actually provided detailed information on how to implement a panoramic visualization technique on a computer, including a directional indicator as required by the ‘529 invention. Id. at 39.

Lastly, the Board found that Patent Owner had not shown that undue experimentation would be necessary for one skilled in the art to construct the ‘529 invention from the cited reference because complex experimentation was customary in the relevant industry and, therefore, the experimentation required here was not “undue.”  Id. 40. Therefore, the Board found that the reference was indeed enabling prior art.

Second Petition Seeking Post Grant Review is Filed

iStock_000012593731SmallFinally, the “PGR” portion of this site is starting to gain some momentum as Accord Healthcare brought the second ever Post Grant Review PetitionAccord Healthcare, Inc. v. Helsinn Healthcare S.A., et al., IPR2014-00010.  Accord challenges the validity of the patent-in-suit pursuant to 35 U.S.C. § 112(a) (lack of written description and enablement) and 35 U.S.C. § 112(b) (failure to particularly point out and distinctly claim the subject matter the inventors regard as the invention).

As the “theory” of Post Grant Review has been discussed and evaluated, § 112 grounds, like those raised in this PGR, were considered ripe opportunities for challenges in these new proceedings.  The underlying downside of such action, however, was the strong estoppel that attaches to Post Grant Review that will cripple future attempts to challenge the validity of the patent-at-issue. As compared to IPR, where the estoppel can only apply to §§ 102 and 103 grounds, based on printed publications or patents, in a PGR, the estoppel extends to all grounds of invalidity that were raised, or reasonably could have been raised.

Where a § 112 defense is a Petitioner’s best defense, though, it seems likely that such defense will be given a more thorough and competent review at the PTAB, with its stable of technically-oriented and patent-savvy judges, than it would with the typical district court judge in federal court litigation.