Inherency Argument Comes Up Short in Inter Partes Review Petition

Doctor EquipmentDespite having multiple grounds denied, Becton, Dickinson and Company was able to get 8 challenged claims of a One Stockduq Holdings patent into a trial for inter partes review, in a case styled as Becton, Dickinson and Co. v. One StockDuq Holdings, LLC (IPR2013-00235), involving U.S. Pat. No. 5,704,914.  Of interest in the decision is the Board’s decision that a prior art reference at issue did not inherently disclose a flexible catheter.

The ‘914 patent relates to a unique catheter assembly which attempts to remedy the widely-recognized problem of accidental needle sticks related to the catheter needle being exposed during the process. More specifically, the ‘914 patent describes three essential parts of the invention: a catheter, catheter hub, and needle body.

The Board its analysis by construing several claim terms.  First, the Board referred to a conventional, online dictionary to assist in the construction of the term “flexible catheter.” To that end, the Board interpreted “flexible” to mean “capable of bending easily without breaking.” Next, the Board construed the term “flexible resilient diaphragm” to mean a “thin sheet of material forming a partition which is capable of bending or being penetrated by a needle easily without breaking and able to spring back into shape after being penetrated” after consulting the same online dictionary. Thirdly, the Board defined the term “between” (as it relates to the invention parts) as “at, into, or across the space separating (two objects or regions).”  Again, the Board relied upon an online dictionary for this definition.

Other than a conventional patentability analysis, of interest in the Board’s decision was its consideration of Petitioner’s argument that a prior art reference disclosed a “flexible catheter” by disclosing that the catheter may be made from several materials, including PTFE.  Petitioner’s expert even conclusorily stated that PTFE “is commonly known in the medical community as a flexible material.”  Order at 22.  The Board rejected this argument, though, finding that “[t]o show inherency, [Petitioner] would need to prove that a catheter made of PTFE would necessarily be flexible.”  Id. (emphasis in original).  As such, the expert testimony was not specific enough, for failing to state that PTFE is necessarily or always used in flexible form in the medical community.

In the end, despite this failing relating to one of the references, Petitioner was able to get 8 challenged claims of the ‘914 patent into a trial for inter partes review.

Expert Opinion on Claim Construction Must Include Evidence to be Given Weight by PTAB

Optical fibersCorning was successful in challenging 22 claims of a DSM IP Assets (DSM) patent in a case styled as Corning Incorporated v. DSM IP Assets B.V. (IPR2013-00053), involving U.S. Pat. No. 7,276,543.  The ‘543 patent relates to radiation curable coating compositions for optical fibers. More specifically, the patent describes optical glass fibers with two radiation-cured coatings which exhibit improved cure speed without increased sensitivity to yellowing over time.

In performing its claim construction analysis, the Board agreed with Patent Owner that only one of the submitted terms needed to be interpreted outside their normal meaning.  Accordingly, the Board set forth a detailed explanation of the lone claim term in dispute, “absorption maxima,” in which it found Patent Challenger’s construction overly broad. Central to the Board’s decision in this regard was the fact that Patent Challenger’s expert declaration, that purported to support Patent Challenger’s interpretation, did “nothing more than state the conclusion that ‘[a] skilled scientist would have recognized’ Patent Challenger’s construction was acceptable.  Order at 5.  The Board went on to instruct that a proper foundation for such an expert opinion on claim construction would include evidence upon which the expert based such a conclusion, or other objective evidence supporting the construction.  In the end, the Board seemed to give no weight to the conclusory declaration offered by Patent Challenger in this respect.  As such, the Board agreed with Patent Owner’s interpretation of an absorption maxima, citing the specification of the ‘543 patent which states that it “will be understood that λmax is a point on the curve wherein the tangent to the curve is parallel with the horizontal axis.”

Also interesting from the Board’s decision was its analysis of whether one of the prior art references cited by Patent Challenger did, in fact, qualify as prior art.  Patent Owner argued that the reference did not qualify because, at the time the invention was made, the prior art patent was commonly owned with the patent-at-issue.  The Board rejected Patent Owner’s argument because Patent Owner had not shown sufficiently that the two patents were commonly owned “at the time of the invention.”  Order at 10.  For example, the evidence cited by Patent Owner was dated after the filing of the application that became the ‘543 patent.  The Board did, however, note that, during the trial portion of the proceeding, Patent Owner would have the opportunity to provide additional evidence concerning ownership (including, presumably, testimony on the point).

The remainder of the Board’s opinion follows the format of earlier decisions on petitions brought by Corning that rely heavily on the inherent disclosure of prior art references.  Earlier posts related to those decisions can be found HERE and HERE.

Testing that Proved Inherent Properties of Prior Art Accepted by Board

Here is another update on the Corning assault on patents owned by DSM IP Assets (DSM) patents, this one styled as Corning Incorporated v. DSM IP Assets B.V. (IPR2013-00050), involving U.S. Pat. No. 6,323,255.  All 19 claims of the ‘255 patent were placed into the inter partes review trial, based on all five obviousness grounds proposed by Corning.

As in the previous battles, the ‘255 patent relates to compositions that may be used as optical fiber coatings.  In this case, the patent covers coatings that have the properties of resistance to discoloration and high elongation. Specifically, the compositions include “at least one transesterified and/or high-purity monomer” to which the coating’s unique properties can be attributed.

As with the previous Corning v. DSM battles, the key takeaway from the Board’s ruling relates to the inherent disclosure of certain properties of the claims-at-issue in the prior art.  Corning’s over-arching position is that the prior art disclosed the claimed coatings, despite the fact that not all the claimed characteristics of the coatings were explicitly listed in that prior art.  The Board agreed, finding that Corning had established a reasonable likelihood of proving that the 19 challenged claims are unpatentable.

For example, with regard to the limitation that the subject composition, when cured, has “a ΔE value of less than 20 when exposed to low intensity fluorescent light for a period of ten weeks,” Corning acknowledged that the prior art did not disclose this property.  Instead, Corning relied on testing by its employees that showed that the property was inherent in the prior art it cited.

DSM responded by arguing that (1) it was improper to rely upon ex post facto testing to show inherency, (2) no motivation to combine was disclosed, and (3) no showing of “reasonable expectation of success in making the combination” were shown.  The Board rejected each such argument, as explained below.

Ex post facto Evidence

DSM’s argument was based on the erroneous view of the law that an inherent disclosure cannot be part of an obviousness analysis.  As the Board pointed out, “ample case law establishes that inherent disclosure may be relied upon in finding that subject matter would have been obvious at the time of its invention.  E.g., In re Napier, 55 F.3d 610, 613 (Fed. Cir. 1995).”  Order at 11. The Board did point out, however, that unknown properties in the prior art may not be relied upon for providing a rationale for modifying or combining the prior art.  Id.  Corning used the testing in support of the former argument, not the latter.  As such, it was appropriate to consider in the Board’s decision.

Reason to Combine

The Board simply disagreed with DSM that Corning had failed to provide any evidence of a reason to combine.  The art itself, as well as Corning’s expert’s declaration, provided such motivation.

Reasonable Expectation of Success

Again, the Board disagreed with DSM’s finding.  More particularly, the Board stated that “[s]ubstituting a 95% pure monomer for a 90.4% pure monomer does not strike us, on the record currently before us, as a change so drastic that it would raise significant doubt in the mind of a the skilled artisan as tot he properties of the resulting composition.”  Order at 13.  Though the Board left the door open, with this statement, for DSM to provide expert evidence to refute Corning’s position, at this stage of the proceeding, the Board was not convinced that the obviousness argument must fail.

Having accepted Corning’s testing evidence, that proved the inherent properties of the prior art compositions, the Board’s subsequent obviousness analysis was relatively straightforward, resulting in another (preliminary) win for Corning.

Fourth Inter Partes Review Trial Instituted

As pitchers and catchers start reporting for Spring Training, it is worth noting that the rookie Patent Trial and Appeal Board is batting 1.000 for patent challengers, having instituted the fourth inter partes review trial out of four decisions it has made.  In Idle Free Sys, Inc.. v. Bergstrom, Inc. (IPR2012-00027), the Board instituted an IPR trial with respect to all 23 claims that were asserted in the petition – a departure from the previous three trials, when most, but not all claims were made part of the proceeding (see, e.g., HERE).

The PTAB’s decision largely turned on claim construction issues, with the Board deciding that several arguments made by Patent Owner in its preliminary response were not persuasive – the terms of the patent were deemed broader in scope than the meaning advocated by the patent owner.  The decision does not contain any significant points of law, but for future reference, it is worthwhile considering a few of the claim construction canons that the Board relied upon in rejecting Patent Owner’s position and instituting this IPR trial.

At threshold, by way of brief factual background, the key limitation at issue related to the term “engine off,” relating to a vehicle engine.  Patent Owner argued that “engine off” could not be met by an engine that is merely stopped or not running, but requires that there be no associated electronics in the ignition system that are primed and ready to automatically start the engine upon detection of a condition.  In short, Patent Owner was arguing that the claim required the vehicle engine to be “completely off.”

Using the Specification to Limit a Claim

One of patent owners’ arguments relied upon the patent specification as support for its proffered claim construction.  The Board discarded this argument, however, because the specification was equally applicable to the broader definition (“off”) and more narrow definition (“completely off”).  To that end, the specification made “no distinction between shut down and completely shut down, and engine off and completely off.”  Order at 10.  Thus, without a specific disclosure that limited the term to the more narrow definition, therefore, the “broadest reasonable interpretation” applied.

Different Terms Have Different Meanings

The patent owner also argued that the “engine off” claim term must be limited to “completely off” because the claim also contained the limitation “engine not running.”  Per Patent Owner’s argument, therefore, “engine off” must not mean the same as “engine not running.”  The Board rejected this argument as well, pointing out that “the claim interpretation principle that different terms have different meanings is only an initial presumption that can be rebutted by evidence such as…how the terms have been used in the specification.”  Order at 10-11.  The Board then relied upon the above-referenced discussion of the specification to refute Patent Owner’s proposed interpretation.


The PTAB’s Order was not entirely against Patent Owner, however, as the Board did reject certain of the grounds asserted by Patent Challenger.  In particular, the Board rejected Patent Challenger’s argument that certain art inherently disclosed “that when a vehicle has an engine and the engine is operating, the engine provides power to the air conditioning system.”  Order at 13.  Patent Challenger’s support for this argument was an expert declaration in which the expert stated that the above proposition “was well known in the art.”  The basis for the Board’s rejection of this argument was the fact that just because something is well known is not sufficient to establish inherency.  Inherency may not be established by probabilities or possibilities.

All Elements Rule

Lastly, the Board also rejected other grounds that sought to invalidate certain claims as anticipated because the asserted art failed to disclose all the elements of the challenged claims.  It is not surprising, but is reassuring, that the Board is undertaking a detailed review of the asserted art and not glossing over certain elements in a claim – a practice that is more common at the examination level at the Office.  Instead, the Board is studiously considering each claim limitation and confirming that the asserted prior art discloses such limitations.