Federal Circuit Weighs in on 3 Aspects of IPR Proceedings in Synopsis v. Mentor Graphics

cafc1Today in Synopsys Inc. v. Mentor Graphics, the Federal Circuit answered several new questions about the PTAB’s duties and the Federal Circuit’s powers of review during and after an inter partes review.

The first—and perhaps most significant—issue in this appeal was whether the PTAB must give a decision regarding all claims that the petitioner challenges. In this case, Synopsys had challenged 19 of Mentor Graphics claims in US 6,240,376, but the PTAB only instituted review on 12 of those claims, and only found 3 of those to be unpatentable in the final written decision. Synopsys appealed, arguing not only that the nine surviving should be held unpatentable, but also that the PTAB was statutorily obliged to address the seven claims on which IPR had not even been instituted. The logic of Synopsis’ argument is that 35 U.S.C. § 318(a) provides that the PTAB “shall issue a final written decision with respect to the patentability of any patent claim challenged by the petitioner… .” Synopsys reasoned that because it had challenged 19 claims, the PTAB was obliged to rule on 19 claims, even if the PTAB had only granted review on 12 claims. The majority opinion—authored by Judge Dyk—dismissed this argument because even Synopsys admitted that it would make little sense to have the PTAB pass on claims about which a full record had not been developed. The majority opinion also noted that § 314(a) speaks of “claims challenged in the petition,” while § 318(a) speaks of a “claim challenged by the petitioner.” The majority cited Bailey v. United States, 516 U.S. 137, 146 (1995) for the proposition that when Congress uses two different phrases, this suggests that the two are to be given different meanings (likening “challenged by the petitioner” and “challenged in the petition” to “used” and “intended to be used” in Bailey).

In other words, the majority held that both the plain text of the statute and common-sense considerations regarding statutory purpose favor the PTAB being only obliged to pass on claims for which IPR was instituted. The majority also noted that even if the statutory text had been ambiguous, Congress had committed the implementation of the America Invents Act (AIA) trial procedures to the USPTO’s expertise, so the USPTO’s implementing regulations are entitled to Chevron deference. The USPTO interprets its regulations as not requiring final decisions regarding claims on which IPR was never instituted, and this is further reason why Synopsys’ appeal fails. This is yet another case showing the Federal Circuit’s great deference to the USPTO’s decisions about how IPR trials are supposed to work. See, In re Cuozzo Speed Tech., 793 F.3d 1268, 1279 (Fed. Cir. 2015); Ethicon Endo-Surgery v. Covidien LP, 2016 U.S. App. LEXIS 473 at *23 (Fed. Cir. Jan. 13, 2016).

Another Synopsys argument for why all challenged claims need to be addressed in one IPR is that IPRs are supposed to resolve invalidity contests concerning documentary prior art (i.e., patents and printed publications) quickly and efficiently. If the PTAB may address some challenged claims but not others, this frustrates the Congressional intention to bring an expedited resolution to novelty/obviousness issues. The majority held that there is “no inconsistency” between the intended efficiency and the piecemeal nature of the PTAB’s review here, because the statute plainly contemplates the possibility of novelty/obviousness contests in both an IPR and a corresponding district court trial (e.g., where some invalidity contentions are based on documentary prior art, and others are based on prior public use). This drew a vigorous dissent from Judge Newman, who made it clear that she thinks that an IPR is supposed to be something that one does instead of—not in addition to—litigating novelty/obviousness in court.

A second interesting question at stake in this case was whether Mentor Graphics should have been allowed to enter a substitute claim set. Just as in the overwhelming majority of AIA trials in which the patent owner seeks to amend, the PTAB refused the proposed amendments. The Federal Circuit has twice affirmed the USPTO’s regulations regarding amendments in IPRs. Microsoft Corp. v. Proxyconn Inc., 789 F.3d 1292, 1303 (Fed. Cir. 2015); and Prolitec Inc. v. ScentAir Techs., 807 F.3d 1353, 1363 (Fed. Cir. 2015). Mentor Graphics attempted to distinguish these cases on the logic that neither had squarely addressed the issue of whether the USPTO’s approach to IPR amendments is consistent with the statutory provision (35 U.S.C. § 316(e)) that “the petitioner shall have the burden of proving a proposition of unpatentability,” (emphasis added). The majority was not impressed with this argument, and noted that § 316(e) begins with the introductory phrase “[i]n an inter partes review instituted under this chapter… .” The majority considered that “instituted under this chapter” means that the only claims for which the petitioner must prove unpatentability are the claims on which review was initially granted. Because Mentor Graphics’ substitute claims were not in the case at the time of institution, the burden allocation in § 316(e) does not apply to Mentor Graphics’ substitute claims. Once again, Judge Newman dissented from this part of the opinion, just as she had done in Prolitec, 807 F.3d at 1365.

Finally, the last interesting question at stake in this case was whether district court review of an IPR decision is available under the Administrative Procedures Act (APA). As this blog recently noted, this question has not been definitively answered, but what little evidence we have suggests that APA review is not available. Synopsys had filed parallel proceedings—challenging the PTAB’s decision not to review all 19 challenged claims—before both the Federal Circuit and the U.S. district court for the Eastern District of Virginia. The district court dismissed this challenge because it concluded that the AIA strips courts of jurisdiction to hear APA challenges to IPR decisions. The Federal Circuit held that because its own ruling here disposed of all the same issues that were at stake in the APA challenge before the district court, that the APA appeal was moot. Therefore, the Federal Circuit dismissed the APA appeal and vacated the district court’s ruling on the subject. Judge Newman also dissented from this holding. Judge Newman considered that the district court was correct—i.e., that the AIA really does strip courts of the authority to hear APA challenges to IPR decisions—and that the district court’s ruling should be affirmed, not vacated. In other words, while the subject of APA review remains technically an open question, this case stands as further evidence that APA review is not available from IPR decisions.

Teaching Away Arguments Fail to Gain Traction with PTAB

19802083_s (1)A favored, but largely unsuccessful, line of defense for Patent Owners in inter partes review proceedings is the argument that the prior art references-at-issue teach away from their combination. A typical form of this teaching away argument arose in IPR2013-00465, styled as SDI Tech. v. Bose Corp., involving US Pat. No. 8,364,295, where Patent Owner argued that the references of record taught two different combinations other than the one that allegedly renders the ‘295 claims obvious, and that these separate teachings constituted teaching away from the claimed invention of the ‘295 patent.  Decision at 19.  The Board rejected this argument.  Id. at 4.

The ‘295 patent relates to audio systems for playing sound from computer files and computer network radio stations.  Patent Owner contended that the references asserted by Petitioner taught two alternative combinations, in addition to the combination asserted by Petitioner, each of which are contrary to the claims at issue.  In the first alternative combination, the computer would be configured to accept the remote control signal and control of all functions would go through the computer, not the speaker system.  This is contrary to the claims at issue, which require the speaker system to control the computer.  The second alternative combination involved the use of a single universal remote to communicate with the device.  This is contrary to the ‘295 claims, which required two separate signal types from the controlling remote(s). Id. at 20.

In rejecting Patent Owner’s arguments, the Board reiterated the principle that disclosure of alternative embodiments does not constitute teaching away.  The Board elaborated that circumstances could arise where the ordinary artisan would choose each of the different combinations depending on his/her purpose.  Id. at 21.

The Board further noted that adding Patent Owner’s alternative combinations to Petitioner’s proposed combination “renders the latter no more than an obvious selection from a finite number (here, three) of predictable solutions.”  Id. at 23.  The three combinations, according to the Board, are essentially three predicable rearrangements of the same elements usable for their intended purpose, and thus, precisely how to arrange these elements would have been only a matter of design choice for the skilled artisan to arrive at the claimed invention.  Id.

Patent Owner also argued that Petitioner’s expert testimony was driven by hindsight because the testimony did not describe the two alternative combinations proposed by Patent Owner.  The expert responded that he did not discuss Patent Owner’s proposed combinations because they would not render the claims obvious.  The Board decided that such focusing of expert testimony on allegedly invalidating combinations was not hindsight bias, noting particularly that the issue is not whether the expert did not describe combinations of the references that would not have rendered the claims obvious, but whether the expert provided a reason, with rational underpinning, for combining the references in the way proposed by the expert.  Id. at 22.

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.

Dissents and Concurrences Popping up in IPR Proceedings

974041_sThe PTAB has been remarkably consistent to date in its decisions regarding the variety of issues in inter partes review practice. Issues both simple and complex have typically been resolved by one panel and future panels, deciding the same type of issue, fall in line. Of late, however, we have begun to see some divergence in views among the various panels, both in terms of one panel disagreeing with an earlier panel, and even some disagreement within a single panel. This latter situation presented itself in two recent Final Written Decisions in Vibrant Media, Incorporated v. General Electric Company, IPR2013-00172 and Smith & Nephew, Inc. v. Convatec Technologies, Inc., IPR2013-00097.

Vibrant Media involved US Pat. No. 6,092,074 and, more particularly, claims 1-12 of that patent. All three members of the PTAB panel determined that claims 1-8 and 12 were unpatentable. A disagreement between those panel members arose, however, relative to claims 9-11. Claim 9 is directed to a computer system comprising multiple steps.  Claims 10 and 11 depend from Claim 9 and add further steps to the system. The three judges agreed that the claims recited both an apparatus and method steps, an improper combination pursuant to 35 USC § 112, ¶2. But, while the majority acknowledged that mixed system and method claims would not be in compliance with 35 USC § 112, ¶2 for infringement purposes, it did not believe such infirmity in the claims prevented it from reaching the patentability of those infirm claims. The alternative would have been to terminate the IPR as to those claims. Order at 9. The dissent criticized this decision, arguing that an obviousness analysis could not be performed on indefinite claims, as a comparison of the invention as a whole to the prior art would be impossible given the indefinite scope of the claims.  Id. at 51-52. The dissenting judge would have terminated the proceeding relative to claims 9-11, not ruling on their patentability.

Smith & Nephew, involving US Pat. No. 6,669,981, was notable for a disagreement regarding a claim construction, resulting in a concurring opinion from one of the PTAB panel members. The ‘981 patent pertains to methods of enhancing the photostability of silver in antimicrobial materials for use in wound dressings and other medical devices. Of particular interest in the proceeding was a concurrence-in-part, which disagreed with the majority’s interpretation of the claim term “photostable”.  The ‘981 specification defined the term “photostable” as a “controlled colour change to a desired color with a minimal change thereafter.”  Decision at 62.  At issue for in the concurrence was the definition of “desired color.”

The majority interpreted “desired color” to encompass any color which is desirable for any purpose, including aesthetic purposes. The concurrence thought this definition was too broad based on what was known in the art, and that “desired color” should reflect the technical viewpoint that color is a measure of photostability. Id. at 62. Specifically, the concurrence pointed to prior art which taught that purple was not a “desired colour” because the color purple was chemically indicative of the degradation of the antimicrobial properties of the wound dressing.  Accordingly, the concurrence believed that “desired colour” should not include purple, but rather be restricted to the art-recognized color of grayish-white.  Id. at 63. Further, the concurrence disagreed with the majority’s interpretation of “minimal” change (in color), believing (unlike the majority) that a change in color of the wound dressing from a desired color to and undesired color would not be a “minimal” change.  Id. at 64. But, despite the disagreement in claim construction, the concurrence ultimately agreed with the outcome of the analysis the majority reached on the merits.

Harness Dickey Successfully Defends Another Patent in Inter Partes Review

Success Road SignThe news has been dreary, to date, for Patent Owners in Inter Partes Review proceedings.  In view of that environment, we are proud to announce that Harness Dickey has successfully defended a second patent in an IPR proceeding on behalf of its clients.  In IPR2013-00020, the Board confirmed the patentability of 12 of 24 claims in U.S. Patent No. 7,297,364 (Final Written Decision).  The IPR relates to co-pending litigation pending in the Northern District of Illinois that had, to date, been stayed pending the result of the IPR proceeding, but will soon restart.  Clearlamp LLC v. LKQ Corp., Case No. 1:12-cv-02533 (Lefkow, J.).

To date, only three Final Written Decisions have resulted in one or more claims surviving and Harness Dickey has been responsible for 2 of those victories.

Four More IPR Final Written Decisions Go Against Patent Owners

On Monday, March 10th, the PTAB issued four additional Final Written Decisions, each of which resulting in total victory for the Petitioner.  The first three were all related – Micron Tech., Inc. v. Board of Trustees of the Univ. of Ill., IPR2013-00005, -00006, and -00008.  The fourth is styled as Xilinx v. Intellectual Ventures I LLC, IPR2013-00029.

In general, the Micron Tech. cases involve straightforward obviousness analyses, comprising a combination of two to three references to make out a prima facie case of obviousness.  Of interest, though, was the Board’s discussion of secondary considerations.  On the issue of unexpected results, the Board discounted Patent Owner’s evidence because Patent Owner failed to compare the results of the claimed invention to the closest prior art.  See, e.g., -00008 Order at 19-20.  On the issue of failure by others, again the Board discounted Patent Owner’s evidence because it failed to account for the prior art teachings of the closest prior art.  Id. 

The Xilinx case involves a continuation of an ongoing battle between Xilinx, Inc. and Intellectual Ventures that has already resulted in Final Written Decisions against four Xilinx patents.  In this proceeding, Xilinx gains a bit of revenge by knocking out the three challenged claims of an IV-owned patent.  Of interest in this case was the Board’s decision to “slightly” modify its earlier claim construction for “light-shutter matrix system.”  Order at 8-12.  In general, the Board undertook a more detailed evaluation of the term, including referencing a dictionary definition, to come up with a broadest reasonable interpretation to be used in the Final Written Decision.  Ultimately, after disposing with several other claim construction issues, the Board determined that two combinations of art rendered the challenged three claims unpatentable.

Also of note was the Board’s denial of yet another Motion to Amend.  In this case, Patent Owner argued that all claims should be given their ordinary and customary meaning.  But, because Patent Owner did not provide specific claim constructions for two of the limitations added to the proposed claims, the Board found that Patent Owner had not met its burden.  More specifically, the Board found that “interpreting both phrases is critical to determining whether the proposed substitute claims are patentable…”  Order at 41.

With MLB Spring Training in full swing, it is worth noting that Patent Owners are batting .000 in Motions to Amend to date.

Trio of Final Written Decisions Go Against Patent Owner

iStock_000020200155XSmallEarly results of Inter Partes Review proceedings continue to favor Petitioners as all challenged claims in a threesome of Columbia University patents have been cancelled by the PTAB in Illumina, Inc. v. The Trustees of Columbia Univ. in the City of N.Y., IPR2012-00006, -00007, and -00011.

The inventions at issue in the three Illumina decisions involve sequencing DNA by incorporating a base-labeled nucleotide analogue into a primer DNA strand, and then determining the identity of the incorporated analogue by detecting the label attached to the base of the nucleotide.

In general, the Board’s analysis of the prior art in coming to its findings of obviousness with respect to all the challenged claims comprises a fairly straightforward analysis, with heavy reliance on the expert witness testimony elicited in the case.

Of greater interest was the Board’s consideration of secondary considerations relative to the claimed invention.  To that end, Patent Owner argued that the obviousness challenges fail because of: 1) unexpected results, 2) the invention received praise and awards, 3) commercial success, 4) evidence of copying, 5) skepticism, and 6) attempts by Petitioner to license the patents.  -00006 Order at 29.  The Board did not find the proffered evidence on these points persuasive:

Unexpected results: Citing In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991), the Board found that, like that case, here “[m]ere recognition of latent properties in the prior art does not render nonobvious an otherwise known invention.”  Id. at 31.  Further, the Board noted that unexpected results must be made relative to the closest prior art.  In this case, the Board found that the argued unexpected results were not performed relative to the closest prior art, rendering the evidence unpersuasive.  Id. at 33.

Praise and Awards: The Board cursorily brushed aside this evidence, finding “it of insufficient weight and relevance to deem it persuasive.”  -00006 Order at 38.

Commercial Success:  The Board noted that commercial success involves establishing success in the marketplace of a product encompassed by the claims and a nexus between the commercial product and the claimed invention.  In this case, Patent Owner’s expert testified that he reviewed the Petitioner’s technical documents and found that all elements of the patented claims were met by Petitioner’s offering. Commercial success of the product must, however, “be due to the merits of the claimed invention beyond what was readily available in the prior art.”  -00006 Order at 36.  Because the aspects of the invention argued to be the commercial success nexus were found in the prior art, that evidence was unpersuasive.

Copying:  The Board did not comment on this evidence.

Skepticism:  With the evidence of “praise,” the Board cursorily brushed aside this evidence, finding “it of insufficient weight and relevance to deem it persuasive.”  -00006 Order at 38.

Licensing:  While the Board recognized the evidence of Petitioner’s offers to license the technology, it found that there was “insufficient evidence that the licensing strategy was driven by a recognition of the merits of the claimed invention, rather than knowledge of a patent potentially covering their own product.”  -00006 Order at 38.

Also of interest in the decisions, was the Board’s reconsideration of an earlier reconsideration relating to an issue of incorporation by reference.  In its Decision to Institute, the Board did not grant a challenge ground based on a reference that incorporated another piece of prior art by reference.  In a decision based on Petitioner’s motion for reconsideration, the Board, in a rare move, changed its mind and included the ground in the trial.  In the Final Written Decision, however, the Board went back to its original position that the incorporation by reference was insufficient.

Lastly, it is worth noting that another three Motions to Amend went down to defeat in these three Illumina decisions.  Patent Owners are winless on the point.

Another Motion to Amend Denied in IPR Final Written Decision

iStock_000016813098XSmallWhile Patent Owners have finally succeeded in having claims survive an inter partes review proceeding, no Patent Owner has yet to find the magic formula that successfully navigates a motion to amend.  In a Final Written Decision in Blackberry Corp. v. Mobilemedia Ideas LLC, IPR2013-00016 (Paper 32), the Board again denied Patent Owner’s motion to amend, finding that the high burden for inherent in such motions was not met.

The case arrived at its conclusion with an interesting posture.  Patent Owner previously had conceded that the six claims challenged in the Petition were unpatentable and they were, therefore, cancelled.  Instead of fighting for those claims, Patent Owner filed a motion to amend the six challenged claims.  Petitioner opposed the motion, but then entered into a settlement agreement with Patent Owner.  In light of the advanced stage of the proceeding, however, the motion to terminate the proceeding was granted with respect to Petitioner, but not with respect to Patent Owner and the proceeding went to a Final Written Decision.

Turning to the merits of the motion to amend, the Board found four faults in Patent Owner’s motion.  First, the Board found that Patent Owner failed to set forth a reasonable claim construction for each claim feature added.  Importantly, Patent Owner did provide a claim construction, supported by expert testimony, but in the Board’s view, it was unreasonable.  Order at 12-15.  Second, the Board found that Patent Owner’s amendment did not respond to a ground of unpatentability.  In its proposed amended claims, Patent Owner eliminated all of the features of several original claims.  For example, instead of adding limitations to those claims, it deleted the material language in its entirety and substituted new language that “has little to do” with the language of the original claim.  Order at 15-18.

Third, the Board found that Patent Owner’s motion did not present a reasonable number of claims.  In general, the Board found that the proposed substitute claims did not correspond to their original claims but were, instead, all proposed substitute claims for the independent claim at issue.  Because Patent Owner did not provide a reasonable explanation as to why five substitute claims were required for one challenged claim, this formed an independent ground for denying the motion.  Lastly, even in light of the above, the Board further found that Patent Owner had failed to demonstrate patentability of the new claims over the prior art.  Citing many of the now familiar concepts from the Idle Free decision, the Board determined that: 1) because Patent Owner limited its discussion to references cited in the petition, 2) did not discuss the level of ordinary skill in the art, and 3) did not discuss what was previously known regarding the added features, the motion to amend should be denied.

First Claims Survive Inter Partes Review Proceedings

HTML web codePatent Owners finally received some good news after a string of pro-Petitioner rulings by the PTAB that saw all challenged claims wiped out in the first 8 Final Written Decisions by the Board.  In Microsoft Corp. v. Proxyconn, Inc., IPR 2012-00026 and 2013-00109, Paper 73, and Synopsis, Inc. v. Mentor Graphics Corp., IPR2012-00042, Paper 60, the Board let the first claims stand after an IPR challenge.  Harness Dickey represented Patent Owner in the Microsoft case, so we will not comment further on that proceeding, but instead, we take a deeper look at what went right for Patent Owner in the Synopsis case.

The first interesting issues from the Synopsis decision were procedural in nature.  First, the Board considered Patent Owner’s argument that the petition was barred because, after the filing of the Petition, Petitioner purchased a company that had been sued by Mentor Graphics more than one year prior to the filing of the Petition. The Board denied this argument, finding that privity is only relevant up until the time a petition is filed — later-acquired privities are irrelevant.  Order at 12.

The second procedural issue of interest relates to the doctrine of assignor estoppel.  This panel of the PTAB agreed with previous panels who have found that the equitable doctrine of assignor estoppel does not provide an exception to the statutory mandate that any person, not the owner of a patent, may file a petition seeking inter partes review.

After those procedural setbacks, however, Patent Owner ultimately prevailed on nine out of 12 challenged claims.   Regarding the Board’s substantive analysis, it is interesting to note that the Board switched in its position regarding the construction of a relevant claim term.  The term, “instrumentation signal,” was not addressed in either Petition or Preliminary Response from a claim construction perspective.  The Board adopted a construction in its Decision to Institute of the term, but then changed its mind in view of Patent Owner’s arguments in its Patent Owner Response.  Order at 18-27.

Ultimately, however, key to the Board’s decision was the fact that Mentor Graphics provided persuasive expert testimony in its Patent Owner Response, and Petitioner had not provided expert testimony.  That imbalance in evidence was a deciding factor in the Board finding that the claims that contained “instrumentation signal” were confirmed as patentable.

As a final note, Patent Owner’s Motion to Amend was denied by the Board because Patent Owner “had not met its burden.”  We will stay tuned to learn whether a Patent Owner can successfully navigate the seemingly insurmountable hurdles to a successful Motion to Amend.

Motorola Mobility Takes Down Another Patent Via Inter Partes Review

iStock_000017334347XSmallThe early promise of the potential of inter partes review proceedings for patent challengers is proving out, as another petition results in the unpatentability of all challenged claims in Motorola Mobility LLC v. Arnouse Digital Devices Corp., IPR2013-00010 (Paper 45).

Unsurprisingly, the basis of the Board’s opinion lie in its claim construction analysis. Patent Owner sought narrow constructions in an attempt to save its claims, to no avail. First, Patent Owner failed to obtain a construction for “connector for connecting” that included a reader slot or hole. In the specification, some embodiments required such a slot or hole, but others did not.  As such, the Board found that, reading that limitation into the claims would not result in the broadest reasonable interpretation.  Order at 6-7.  Further, in dicta, the Board went on to comment that, even if the slot/hole embodiment was the only embodiment in the specification, the Board might not construe the claim to require such slot or hole.  Order at 8.

The second key claim construction issue in the decision related to the interaction of Patent Owner’s proposed claim construction in the inter partes review, as compared to the claim construction it advocated before the district court in related litigation.  In general, the construction offered in the IPR was more narrow than that offered to the district court.  Order at 9-10.  It was interesting that the Board, at least partially, relied on that fact – past decisions have seen the Board ignore what has happened at the district court.  One possible explanation is the fact that Patent Owner’s proposal could not possibly be the “broadest reasonable interpretation” when it was more narrow than that advocated by Patent Owner in the related proceeding.

In the end, these claim construction decisions doomed Patent Owner’s challenged claims, resulting in a finding that all challenged claims were unpatentable.