IPR Incorporation by Reference Argument Not Enough to Save Priority Claim

26168884_sMany patent challengers have found “incorporation by reference” arguments to be a tempting way to try to convert an obviousness argument into an anticipation argument, but “incorporation by reference” can also impact whether a reference qualifies as prior art, as was the case in IPR2014-00664, IGB Automotive Ltd. and IG Bauerhin GMBH v. Gentherm GMBH.  In that case, the Board instituted review in part because the challenged patent’s earliest claimed priority document did not sufficiently describe the claimed subject matter, rejecting Patent Owner’s argument that the priority document’s “incorporation by reference” sufficiently bolstered the patent’s disclosure.

More specifically, the patent-at-issue claimed priority to two provisional applications having different filing dates. Decision at 14.  Patent Owner argued that a prior art reference (Knoll) relied upon by Petitioner was not prior art because it antedated the earlier of the claimed priority documents. Petitioner countered that the earlier provisional did not contain an enabling disclosure for the subject matter of the claims at issue, making the challenged patent’s earliest priority date filing date of the second (later) provisional application. Id. at 14.  If this later priority date were used, then the Knoll reference would qualify as prior art. The Board agreed with Petitioner, finding that the earlier provisional application did not, on its face, adequately describe at least one of the limitations in the challenged claims.  Decision at 15.

Patent Owner presented a back-up argument, asserting the earlier provisional application does support the priority claim based on that provisional’s “incorporation by reference” of other documents that did adequately describe the claim limitations at issue.  The Board rejected this argument, finding that the facts did not meet the strict incorporation by reference standard, which requires that the alleged priority document “both identifies with ‘detailed particularity’ the specific material in the patents asserted to be incorporated by reference, and ‘clearly indicates’ where that material is found in the incorporated patents.”  Decision at 15 (Board’s emphasis, and citing Xenon Environmental, Inc. v. U.S. Filter Corp., 506 F.3d 1370, 1378–79 (Fed. Cir. 2007).

Accordingly, the Knoll reference did qualify as prior art.


PTAB Getting Tough on Petitions Seeking to Circumvent Page Limit

11011816_sOld habits are hard to break. Patent attorneys love to put forth every argument in their arsenal and let the chips fall where they may. Problem is, Congress set up inter partes review procedures to ensure a just, efficient and inexpensive resolution to the patentability of challenged patents. To that end, Patent Office regulations require a maximum, 60-page limit for the Petition. To get around this limit, Petitioners are increasingly seeking to stash a large portion of their arguments in an expert report that accompanies the Petition. In this way, citations in the Petition to these lengthy declarations are intended to allow Petitioners to include all of their arguments in their filing, but still stay within the 60-page limit for a Petition. Problem is…..the PTAB recognizes this technique for what it is – a way around the page limit. Numerous Petitions have now been denied as failing to comply with the page limit because Petitioner’s arguments are not contained “within the Petition.”  35 U.S.C. § 312(a)(3) (“A petition filed under section 311 may be considered only if…(3) the petition identifies, in writing and with particularity, each claim challenged, the grounds on which the challenge to each claim is based, and the evidence that supports the grounds for the challenge to each claim…”).

This scenario was presented in Fidelity National Information Services, Inc., v. DataTreasury Corp., IPR2014-00489, involving US Pat. No. 5,910,988. Petitioner asserted seven grounds of unpatentability and provided a claim-by-claim analysis to show all limitations taught or suggested in the art. Throughout the petition, Petitioner cited to a declaration by an expert that spanned nearly 300 pages and further comprised a 1,003-page, single-spaced claim chart labeled as Exhibit A.  The claim chart also incorporated the prior art references themselves.

The Board found that Petitioner used this system of multi-level incorporation to circumvent the page limit requirements of the petition. Within each ground, Patent Challenger used only a few pages of the actual petition to essentially incorporate many more pages of arguments by citation to the declaration, which further cited to the claim chart.

Under 37 C.F.R. § 42.22(a)(2), a petition for inter partes review must contain a “full statement of the reasons for the relief requested, including a detailed explanation of the significance of the evidence.”  In view of this requirement, the Board ignored much of Petitioner’s arguments, as they were contained in the declaration and claim chart, not the Petition itself.  As such, the Petition lacked sufficient citation to the references themselves to support the asserted grounds of unpatentability and the Board denied the petition.

UPDATE: Petitioner’s Motion for Rehearing was denied on October 9, 2014.

Incorporation by Reference Not Allowed in Inter Partes Review

Given the Board’s repeated admonitions regarding the speed and efficiency of inter partes review proceedings, it comes as no surprise that the Board has consistently rendered decisions that strengthen and reinforce the strict time lines and page limits of the proceedings.  To that end, in PCT Int’l, Inc. v. Amphenol Corp., IPR 2013-00229 (Paper 17) (December 24, 2013), the Board thwarted Patent Owner’s attempt to “incorporate by reference” its Preliminary Response into its later Patent Owner response.

37 CFR § 42.6(a)(3) – Incorporation by reference; combined documents.  Arguments must not be incorporated by reference from one document into another document.  Combined motions, oppositions, replies, or other combined documents are not permitted.

Pointing out that Rule 42.6(a)(3) prevents parties from circumventing page limitations, the Board stated that it would only consider arguments properly presented in the Patent Owner’s Response, not any arguments that were merely incorporated by reference into the preliminary response.

Patent Owner Finally Wins! First Inter Partes Review Trial Denied

After running off a string of ten straight victories, a patent challenger faced its first setback in an inter partes review proceeding, as the Board declined to institute an IPR review against any of the 18 challenged claims in Synopsys, Inc. v. Mentor Graphics Corp. (IPR2012-00041), involving US Patent No. 6,947,882.  The Board considered all of the proposed grounds by Patent Challenger, but found that the “reasonable likelihood” standard had not been met (stay tuned…a second IPR petition, involving the same parties, resulted in the institution of a trial on a second patent).

The subject matter of the ‘882 patent is a system for emulating integrated circuit designs.  The key limitation upon which the Board focused was whether the claimed “independent” clock signal encompassed “asynchronous” clock signals.

The Board first noted that the Patent Challenger did not explicitly make the argument that independent encompasses asynchronous, but deduced that this was the thrust of Patent Challenger’s argument, based upon the claim charts and supporting argument from the petition.  The Board, however, agreed with Patent Owner that the term “asynchronous” was not synonymous with “independent.”  Order at 6.  In so finding, the Board relied upon the dictionary definition of “independent,” and found that nothing in the patent specification suggested that the term should be interpreted differently.

[pullquote align=”left|center|right” textalign=”left|center|right” width=”30%”]35 USC §315(d) – In determining whether to institute or order a proceeding…the Director may take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments were presented to the Office.[/pullquote]

After completing its claim construction analysis, the Board turned to a comparison of the challenged claims to the proposed art.  At threshold, the Board addressed Patent Owner’s argument that the art contained in the petition was already considered by the Office – an argument that has already proven to be popular among Patent Owner Preliminary Responses.  The Board found, however, that the petition’s arguments were not previously considered because the reference at issue was applied in a different way during prosecution vis-à-vis what was proposed in the petition.  Thus, the Board declined to ignore the proposed grounds solely on the basis that the art was previously before the Office.

But the Board ended up at the same conclusion anyway, finding that none of the proposed grounds met the reasonable likelihood standard.  At the outset, the Board considered the argument by Patent Challenger that sought to incorporate by reference the disclosure of a different prior art reference.  Because the ‘882 patent “unambiguously incorporated the entire…specification,” the Board found that the document became part of the host ‘882 patent, as if it were explicitly contained therein.  Citing Telemac Cellular Corp. v. Topp Telecom, Inc., 247 F.3d 1316, 1329 (Fed. Cir. 2001).  Despite that fact, the Board went on to find that the prior art did not anticipate because the reference failed to disclose the Board-construed “independent” limitation.  The Board had similar findings with regard to the other two references cited in anticipation arguments.

The Board also denied the grounds set forth in the petition relating to obviousness based primarily on the fact that Patent Challenger did not adequately explain its obviousness position.  Citing 35 USC §312(a)(3) and 37 CFR 32.104(b)(4), the Board found that Patent Challenger’s petition failed to identify with particularity each challenged claim, the grounds on which the challenge is based, and the evidence that supports that ground.  In short, Patent Challenger’s conclusory statements failed to meet the above-referenced standards to properly exceed the “reasonable likelihood” standard.

The Board’s decision not to initiate a trial in this inter partes review contained significant discussion that spoke more to the deficiencies of the petition, than to the strength of the challenged patent.  In any event, Patent Owners can be heartened by the fact that the Board is not merely rubber stamping each petition.  While the Board’s in depth analysis in its Orders initiating IPR trials made it clear that it was not working with a rubber stamp, the results spoke for themselves up to this point.