39 for 44: Previously Considered Art Survives Again in Grant of Two Inter Partes Review Trials

The Board furthered its early reputation of providing thorough decisions regarding the institution of inter partes review trials, by digging into dependent claims of the challenged patents and allowing certain claims to survive in two cases styled ABB, Inc. v. Roy-G-Biv Corporation (IPR2013-00062 and IPR2013-00074), involving US Patent Nos. 6,516,236 and 8,073,557. The Board granted trial on 7 of 10 challenged claims for the ‘236 patent and 12 of 29 challenged claims for the ‘557 patent.

The patents relate generally to a system that facilitates the creation of hardware-independent motion control software. In particular, the patents describe a high-level motion control application programming interface (“API”) made up of functions that are correlated with driver functions associated with controlling a mechanical system that generates movement based on a control signal.

Patent Owner specifically addressed proposed interpretations of the terms “primitive operations” and “core driver functions.” Because Patent Challenger’s proposed interpretations for the other patent terms did not appear unreasonable, the Board adopted them “at this stage of the proceeding.” We emphasize this point because it reinforces other decisions by the Board that suggest that a Patent Owner can address claim construction issues again after an IPR trial has been initiated.  As to the term “primitive operations” the Board found that Patent Challenger’s proposed definition was overly and did not comport with an explicit definition provided in the specification.

The Board used a similar analysis in adopting the specification definition of “core driver functions,” against Patent Challenger’s argument that the term was too vague. Patent Challenger’s position “ignores the explicit definition in the claim language itself.”  As should be expected, the intrinsic evidence controlled regarding this claim construction issue.

Having addressed the claim construction issues, the Board turned to Patent Owner’s argument that a prior art reference was cumulative because it was considered during the original prosecution and Inter Partes Reexamination of the ‘236 patent. The Board rejected the argument: “While we are cognizant of the burden on the Patent Owner and the Office to rehear the same or substantially the same prior art or arguments that were considered by the Office in a prior proceeding, we decline to reject the petition solely on the ground that Stewart, a reference related to the operating system upon which Gertz’s system is based, is a member of an eight-page list of references on the ‘236 reexamination certificate.” IPR2013-00062 Order at 13.

Despite that minor victory, Patent Challenger’s anticipation arguments were then rejected because they failed to show that operations performed by control tasks in Gertz were “primitive operations,” as that term was defined by the Board, above. With regard to the grounds based on obviousness, the Board was not persuaded by the Patent Owner’s arguments that the Gertz reference taught away from using primitive operations. The Board did, however, find that limitations in dependent claims 5-7 were not disclosed by the proposed combination of references, preventing a finding of obviousness.  Specifically, the Board found Patent Challenger’s argument that the prior art disclosed the limitation contained in these claims to be lacking.  It is interesting to note that, in a footnote, the Board mentioned that although Patent Challenger asserted the limitations were disclosed by another reference, Patent Challenger did not assert a combination that included that reference as a ground of unpatentability. IPR2013-00062 Order at 17.

After completing its analysis, the Board granted trial on some, but not all of the challenged patent claims of both the ‘236 and the ‘557 patents. The Board’s claim construction analyses, which were based on the definitions disclosed in the specification (rejecting an argument that such definitions were vague) doomed some of Patent Challenger’s anticipation and obviousness challenges.

35 for 38: Third Petition for Inter Partes Review Denied

Padlock circuit

After an early start of granting almost every IPR petition, the Board has now denied its third petition seeking inter partes review. Wowza Media Systems was unsuccessful in getting any of the 19 challenged claims of an Adobe patent into inter partes review trial in a case styled as Wowza Media Systems, LLC and Coffee Cup Partners, Inc. v. Adobe Systems Incorporated (IPR2013-00054), involving US Pat. No. 8,051,287.  The ‘287 patent relates to establishing an encrypted communication session.

The Board started with a claim construction analysis and decided that only one of the several proposed constructions offered by Patent Challenger was material.  But, even with regard to that one term, the Board did not agree with the proffered interpretation.  More specifically, Patent Challenger submitted that the claim limitation “reserved for random data” should not be given its plain and ordinary meaning, but instead should be given a specific construction.  The Board disagreed, finding that Patent Challenger provided no reasoning or evidence to support the position that the phrase should not be interpreted in accordance with its ordinary meaning. Order at 6.

The Board then turned to a claim limitation that was not included in the list of terms addressed by Patent Challenger.  The Board found that “pre-defined” was the term most pertinent to the issues raised in the petition, even though it was not addressed by either of the parties!  To define the term, the Board looked to Webster’s Third New International Dictionary, Unabridged (1993) and found that the definition of “pre-defined” from that dictionary comported with the plain and ordinary meaning of the term.

The Board then moved on to an analysis of the proposed grounds of unpatentability. Patent Challenge alleged a specific combination of references for an obviousness challenge, but also alleged obviousness over various other combinations of references in the alternative, without providing support by applying the combinations to any of the claims. Because the Patent Challenger provided insufficient analysis of several references as applied to specific limitations of the claims, the Board did not consider those references further. Order at 10-11. Additionally, the Board criticized both the Patent Challenger’s lengthy claim chart for providing little to no guidance as to where the challenged claim portions were found in the references, and the Patent Challenger’s 100 page expert declaration for simply tracking and repeating the arguments presented in the petition without relating to any specific claim limitations. Order at 12.

The Board then rejected Patent Challenger’s reliance on KSR support for obviousness because Patent Challenger did not identify any teaching in the references of establishing one of the claim limitations and, therefore, did not demonstrate a prima facie case of obviousness under KSR. Order at 14-15.  Relatedly, Patent Challenger was deemed not to have identified a limitation from the claims with respect to a second combination of references. Order at 16.  Lastly, with respect to a third combination of references, Patent Challenger was deemed not to have offered a convincing rationale as to why one of ordinary skill in the art would have chosen to combine the references in the manner suggested by Patent Challenger.  Order at 19.

In the end, the petition was denied because the Board did not agree with the Patent Challenger’s special broader claim construction positions, and the lengthy claim charts, expert declaration, and petition all failed to specifically identify where each limitation from the claims was found in the prior art references. As a result, all 19 challenged claims were denied.

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.