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.

57 for 62: Four Related Corning Petitions Result in Inter Partes Review Trials

Corning continued its challenges to numerous patents assigned to DSM IP Assets (DSM) that are directed to coating compositions for optical fibers. Due to the similarity of their subject matter, this post covers decisions in four related matters, styled as Corning Inc. v. DSM IP Assets B.V., (IPR2013-00048, IPR2013-00049, IPR2013-00045, and IPR2013-00046), involving U.S. Pat. Nos. 6,298,189 (twice); 6,399,666; and 6,110,593.

The ‘189 patent, the ‘666 patent, and the ‘593 patent all relate to radiation curable coating compositions for optical fibers. More specifically, the patents describe optical glass fibers with two radiation-cured coatings. To create cable or ribbon assemblies, numerous coated optical fibers are bonded together in a matrix material. As part of the manufacturing process, the glass fiber surface must be accessible, a process known as “ribbon stripping.” All three patents are directed to a ribbon assembly having improved ribbon stripping capabilities.

The Board’s analysis in all four cases, began with a claim construction “analysis.”  Patent Challenger submitted proposed constructions for several claim terms, but the Board, without any analysis, merely agreed with Patent Owner that the terms being disputed need not be interpreted in a manner that departs from their ordinary and customary meanings for purposes of its decisions.

Then, the Board turned to an overview of the petition. In all cases, Patent Challenger asserted that the subject matter in the challenged claims was only initially allowed during prosecution because the claim limitations were, for the most part, in the form of inherent properties of the composition which were not explicitly disclosed in the prior art. To support this position, Patent Challenger relied on the expert testimony of two of its own scientists, one of which reproduced prior art compositions to test them for inherent properties, and the other of which vouched for the validity of testing.

In rebuttal to this testing, Patent Owner argued that Patent Challenger deviated from what is described in the references during reproduction and testing of products and further that Patent Challenger improperly relied on inherency principles and ex post facto testing.

The Board then moved on to analyze Patent Challenger’s numerous asserted grounds of unpatentability in all four cases. Of particular interest, given the testing evidence relied upon by Patent Challenger, was Patent Owner’s argument that the contentions rely upon ex post facto testing – not information that was known at the time of the invention or disclosed in the cited references. But, the Board rejected Patent Owner’s attempts to undercut Patent Challenger’s inherency arguments in several respects. For example, the Board pointed out that it is not a requirement that the inherent properties of the prior art be known at the time of the invention.  00048 Order at 16-17.  By contrast, unknown properties cannot be relied upon to provide a rationale for modifying or combining prior art to reach the claimed subject matter.  Id. at 17.  But, because Patent Challenger did not predicate its obviousness challenges on the latent properties – that is, Patent Challenger did not argue that those properties, themselves, provide the rationale for combining prior art references, Patent Owner’s rebuttal failed.  As such, the Board accepted the testing evidence.

In addition, Patent Owner argued that the anticipation argument made by Patent Challenger required the selection of base oligomers from several different examples in the prior art patent.  Per Patent Owner, therefore, the reference could not be anticipatory.  The Board disagreed, finding that “a reference is not disqualified as anticipatory simply because ‘one of ordinary skill in the art would be required to pick items from two lists of components in order to assemble the invention.'”).  See, e.g., 00048 Order at 12. As a backup to this finding, the Board went on to find that the reference at issue renders the claims obvious because it provides reason to combine the various examples.

The Board also commented on the use, by Patent Challenger’s expert, of a secondary reference as part of an anticipation argument.  Patent Owner had argued that the use of the secondary reference required that there could be no anticipation.  The Board disagreed, finding that the anticipation argument does not rely upon more than one reference simply because a second reference is discussed.  Instead, the second reference is used to support the expert’s testimony regarding the knowledge of a person having ordinary skill at the time of the invention.

In summary, the Board granted the petition of Patent Challenger as to 20 of 20 challenged claims in the ‘666 patent, 66 of 66 challenged claims in the ‘189 patent, and 9 of 9 challenged claims in the ‘593 patent based on extensive obviousness and anticipation grounds.

Ninth Inter Partes Review Trial Instituted

In the third of four inter partes review trials involving Intellectual Ventures and Xilinx, all instituted on February 12, 2013, the PTAB again has again instituted an inter partes review trial against a Xilinx patent, this time US Patent No. 8,058,897, in the IPR styled as Intellectual Ventures Management LLC v. Xilinx, Inc. (IPR 2012-00020).  As with the previous Orders (see, e.g., HERE), the Board in this IPR proceeding instituted the trial against all challenged claims, granting on four of the nine proposed grounds.

The subject matter of the ‘897 patent covers an integrated circuit that includes multiple dies, wherein a master die receives configuration data for both the master and a slave die.  The key limitations at issue in the Board’s ruling were the terms “integrated circuit” and “die,” with the Board holding that the ‘897 patent claims require a multi-die IC, where a die is a “single piece of silicon that contains one or more circuits and is or will be packaged as a unit” (relying on the “Authoritative Dictionary of IEEE Standard Terms” in coming to this conclusion).

In turning to the Board’s specific analysis of the proposed grounds of unpatentability, a few interesting points are revealed.  At threshold, Patent Owner chided the petition for failing to present prior art that teaches all of the claim elements, including a multi-die IC and, therefore, that the “proposed obviousness rejection” is incomplete.  The Board rejected this argument, finding that IPR proceedings are different than reexamination or continued prosecution in that no “proposed obviousness rejection” is to be made by the Board.  Regardless of how the counter-argument was phrased (it may have been better for Patent Owner to frame its argument that a prima facie case of obviousness had not been advanced), it is eye-opening that the Board accepted a 103 argument where each of the limitations were not found in the proposed combination of prior art.

To come to that obviousness conclusion, the Board remarked that Xilinx did not take into account the level of ordinary skill in the art.  The Board went on to articulate the appropriate level of ordinary skill in the art for this matter, and then went on to find that developing a multi-die IC would have been a matter of routine implementation given that level of ordinary skill.  As such, even though Patent Challenger advanced art that lacked this key limitation of the claims, citing the KSR decision, the Board found that “it would have been within the knowledge and skill set of a person of ordinary skill in the art” to arrange the dies on the same IC, creating a multi-die IC.  Order at 11.

It is also worth noting that the Board rejected, in its discussion relating to Ground 4 (Order at 14-15), the argument by Patent Owner that the Petition was defective for not providing a statement of the precise relief requested.  In a manner that rings of a motion for more definite statement before a district court, Patent Owner had argued that Ground 4 did not specifically articulate the relief requested.  The Board did not accept this argument, finding that Patent Challenger “has substantively provided an underlying explanation of how [the prior art] applied to claims 12-14.”  While the titles used by Patent Challenger may not have been representative of the precise nature it sought, the Board found that to deny Ground 4 based on the titles used would exalt form over substance.  In short, this portion of the decision is interesting because, for one of the very few times, the Board seems to giving some leeway as compared to a strict reading of the Trial Practice Rules.

In the end, the Board instituted the IPR based upon Grounds 1, 2, 4, and 9.  The Board denied Grounds 3 and 5-8, finding that they were cumulative in view of the other grounds that were granted.

At the risk of becoming repetitive, it is worth noting again that the Board did not rely upon the mere recital of “broadest reasonable interpretation,” but rather articulated a specific claim construction for the disputed terms.  Consciously or not, the Board is moving the battlefield for many inter partes reviews to claim construction.  While parties to IPR proceedings must take note of this strong trend, there are certainly risks (especially to patent owners) to articulating claim construction positions in these proceedings and this should be carefully considered when making claim construction arguments.