Patentee’s Teaching Away Argument Fails to Overcome Substantial Evidence of Unpatentability

An obviousness challenge can be overcome by showing the prior art teaches away from the claimed invention.  However, “teaching away” is a question of fact and thus subject to the substantial evidence standard in appeals from IPR decisions.  It is thus difficult to overcome a PTAB determination on this issue, as exemplified in Meiresonne v. Google, Inc., No. 2016-1755 (Fed. Cir. Mar. 7, 2017).

In Mereisonne, Google challenged four patent claims based on a two-reference obviousness argument.  The parties agreed that, together, the references taught every limitation of the claims.  The only issue on appeal was whether the secondary reference taught away from the claimed invention by criticizing an element of the invention.  The Federal Circuit affirmed the PTAB’s decision that it did not, finding substantial evidence supported the PTAB’s determination.

More particularly, the claims were directed to computer systems that users could use to identify suppliers of goods and services over the internet (basically, a directory).  The directory website included (1) a plurality of links to supplier websites, (2) a supplier description near the corresponding supplier link, (3) a title portion that describes the class of goods or services on the website, and (4) a rollover window that displays information about at least one of the suppliers corresponding to a link.

The rollover element was central to the dispute.  The prior art (Finseth) taught a visual index for a graphical search engine that provides “graphical output from search engine results or other URL lists.”  Finseth explained that many web directories included only cursory or cryptic text about the website in the results.  Finseth thus taught the use of thumbnail or other representational graphic information to accompany hyperlink results.  The primary reference, Hill, also explained that such abstract text was often “gibberish” and advocated visiting the actual site instead of relying on the abstract text accompanying the hyperlink.

The Federal Circuit agreed this criticism was not sufficient to teach away from the claimed rollover window (which corresponded to the prior art abstract test).  Despite the prior art’s criticisms, it did not that abstract text was useful in culling through results.  The Court also found that even if abstract text was often not useful, the prior art said that other links’ abstract text was useful.  Thus, the prior art did not sufficiently discourage the person of ordinary skill from following the path set out in the reference, and did not lead the person in a direction divergent from the path taken.

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.

Preliminary Response that Addresses the Merits of Petition Again Fails in Grant of IPR Trials

iStock_000031747934XSmallTime and again, Patent Owner arguments on the merits in Preliminary Responses  have been smothered by expert testimony and other evidence that is allowed with a petition.  As such, as IPR practice has evolved, more and more Patent Owners are waiting until the formal Patent Owner response before presenting its arguments.  In short, and as the high number of petition grants makes clear, trying to substantively fight a petition at the preliminary response phase is not working.  In this fashion, Texas Instruments was able to get 16 challenged claims of a Unifi Scientific Batteries patent into a trial for inter partes review, in a case styled as Texas Instr., Inc. v. Unifi Scientific Batteries, LLC (IPR2013-00213), involving U.S. Pat. No. 6,791,298. Additionally, Samsung was successful in challenging 12 claims of the same Unifi patent in a case styled as Samsung Elec. Co., Ltd. v. Unifi Scientific Batteries, LLC (IPR2013-00236).

The ‘298 patent relates to “monolithically formed battery charging devices” which include at least one step-down DC to DC converter. The idea of the step down converter described by the ‘298 patent is to allow a lower output voltage relative to input voltage, which allows for a greater output current relative to the input current.

In the IPR2013-00213 proceeding, the Board started by considering claim construction issues, including by considering whether of the challenged claims was a limitation on the claims. Finding that the preamble’s recitation of “monolithic battery charger” limited the scope of the invention because it fundamentally described what the claimed apparatus was, not merely an intended use, the Board construed the preamble to have patentable weight. Next, the Board cleared up confusion over what appeared to be an omission of percentage symbols from the claims. Order at 8.  Looking to the specification for support, the Board held that the limitation of “from approximately 10 to approximately 95” would be understood by one of skill in the art to be referencing percentages.  Order at 9.  To conclude, the Board interpreted the term “monolithically formed” to mean “formed in a single integrated circuit package or wafer die.”  Order at 10.

Next, as a threshold matter, the Board dismissed Patent Owner’s argument that the Petition should be denied as incomplete because Patent Challenger contended that the “broadest reasonable construction” should be applied, but provided no explanation for what is that interpretation.  While the Board ultimately determined that specific claim constructions were required, the Board found that Patent Challenger sufficiently stated its position.  Order at 11.

Turning to the specific art cited by Patent Challenger, the Board addressed three arguments raised by Patent Owner, finding none persuasive.  First, the Board discounted the argument that one of skill in the art would not have combined the references of record because one of the references did not teach the type of converter at issue in the ‘298 patent.  Second, the Board did not agree with Patent Owner’s argument that a combination of the references would destroy the purpose of the converter.  Lastly, Patent Owner argued that the prior art taught away from a combination of the references.  Importantly, with respect to all of the above arguments, the Board indicated that Patent Owner had not pointed to sufficient and credible evidence.  Of course, the formal response, and the ability to provide expert testimony, would give Patent Owner the opportunity to provide that type of evidence.  At this stage of the proceeding, however, the evidence was sufficient for Patent Challenger to have met its burden to institute the IPR trial.

IPR2013-00236 was predictably a very similar proceeding, with the Board noting that some of the challenged claims in IPR2013-00236 overlap with those of the IPR2013-00213. The claim construction in the two proceedings was nearly identical and similar arguments were used, resulting in the Board granting the Petition as to all challenged claims. The Board in IPR2013-00213 suggested the parties be prepared to discuss whether the two proceedings should be joined, a suggestion repeated by the Board in IPR2013-00236.

With Patent Owner unable to overcome obviousness arguments heavily supported by expert testimony, Texas Instruments was able to get 16 challenged claims of the ‘298 patent into a trial for inter partes review. In a separate proceeding suggested to be joined, Samsung was able to get 12 claims of the same patent into a separate trial or inter partes review.

Hindsight and Teaching Away Arguments Fall Short in Decision to Initiate IPR Trial

iStock_000029749560XSmallIn a short decision, Fellowes was able to get 16 challenged claims of a Speculative Product Design patent into a trial for inter partes review, in a case styled as Fellowes, Inc. v. Speculative Product Design, LLC (IPR2013-00197), involving U.S. Pat. No. 8,204,561.

The ‘561 patent relates to protective cases for mobile phones and other electronic devices. More specifically, the ‘561 patent describes an improvement over existing cases by combining a hard shell with a soft-elastomeric material in a single part to form the case for the device.

Finding no specific claim terms that required construction, the Board considered the proposed obviousness grounds from Patent Challenger; namely a primary reference in combination with two separate secondary references, both of which relate to cases for personal or portable electronic devices. Patent Challenger argued that it would be obvious to one skilled in the art to combine the primary reference, which taught a two-piece case, with the two secondary references, which taught a co-molding process in merging soft and hard-shell components in cases, to form a one-piece case for a personal electronic device. Patent Owner countered that such analysis was nothing more than impermissible hindsight.  Order at 8.  To that end, Patent Owner argued that the disclosure that purported to provide the “teaching” to combine was open ended and not specific enough to teach one of ordinary skill to develop a “successful device.”  Id. at 9.

Patent Owner also argued that the prior art taught away from the limitations of several dependent claims.  Specifically, the dependent claims require that the outer shell of the case be cut away at the corners.  The prior art explicitly taught that the corners should not be cut away.  The Board rejected this argument, as well, finding that the prior art provided evidence that a person of skill would know the advantages and disadvantages of having protective material at the corners.  As such, the reference did not teach away.  Id. at 10.

Thus, after a short and straightforward obviousness analysis, Fellowes was able to get 16 challenged claims of the ‘561 patent into a trial for inter partes review based on its proposed obviousness ground.

Operability of Combined References Considered by PTAB in Obviousness Analysis

iStock_000011462794XSmallIn a challenge relying in part on prior art previously considered during prosecution, Zodiac Pool was able to get 15 of 18 challenged claims of an Aqua Products patent into a trial for inter partes review in a case styled as Zodiac Pool Sys., Inc. v. Aqua Products, Inc. (IPR2013-00159), involving U.S. Pat. No. 8,273,183.

The ‘183 patent relates to “self-propelled apparatus and methods for controlling such apparatus for cleaning a submerged surface of a pool or tank.” The ‘183 patent further discloses methods for controlling the movement patterns of the cleaning apparatus as it moves over the bottom and sides of a pool or tank.

The Board’s construction of the term “a stationary directional discharge conduit” warrants discussion in light of its consideration of the indefinite article “a” contained in the term.  After considering the specification and file history of the ‘183 patent, the Board construed the term to mean “one or more discharge conduits.”  Citing KCJ Corp. v. Kinetic Concepts, Inc. 223 F.3d 1351, 1356 (Fed. Cir. 2000), the Board adopted the long-established rule that an indefinite article, such as “a” or “an” is typically construed to mean “one or more” when found in an open-ended claim that contains the transitional phrase “comprising.”  Order at 10.

Patent Owner sought to limit the Board’s review by pointing out that one of the prior art references cited by Petitioner was already considered by the Examiner during prosecution.  The Board noted, however, that Petitioner presented different arguments and evidence that that before the Examiner, so the Board did not deny the grounds solely on the basis of 35 USC § 325(d).

Lastly, it is worth noting two arguments made by Patent Owner that were rejected by the Board relating to the obviousness grounds raised in the petition.  First, regarding the idea that the prior art taught away from the incorporation of an internal pump, the Board found that, “the fact that the motivating benefit comes at the expense of another benefit…should not nullify its use as a basis to modify the disclosures of one reference with the teaching of another.  Instead, the benefits, both lost and gained, should be weighted against one another.”  In view of this analysis, the Board found that the references did not teach away.  Order at 24.  Second, with regard to Patent Owner’s argument that Petitioner failed to describe how an internal pump could be operably incorporated, the Board cited the Federal Circuit explanation that “[t]he test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference…Rather, the test is what the combined teachings of those references would have suggested to those of ordinary skill in the art.”  As a result, the Board again rejected Patent Owner’s argument.  Order at 25-26.

This rationale by the Board, that hurt Patent Owner’s argument in one regard, was helpful in another.  Regarding one of the obviousness grounds set forth by Petitioner, the Board noted that Petitioner did not “address the inconsistency or conflict created by the proposed modification or to explain why, on balance the benefits of the proposed modification outweigh its deleterious effects on the operation and use of [the prior art’s] device.” Order at 33.  Operability is, therefore, a viable argument for a Patent Owner before the PTAB.

In the end, after a lengthy challenge, Zodiac Pool was able to get 15 of 18 challenged claims of the ‘183 patent into a trial for inter partes review.


49 for 54: Successful Rehash of Old Arguments in Grant of 2 IPR Trials

Innolux’s decision to spread a challenge to a Semiconductor Energy Laboratory patent over two separate IPR cases paid off, as they successfully forced all 33 challenged claims into two trials in cases styled as Innolux Corp. v. Semiconductor Energy Lab. Co., Ltd. (IPR2013-00064 and IPR2013-00065), involving US Pat. No. 7,923,311. Trial was instituted for all 10 challenged claims in the IPR2013-00064 case and all 23 challenged claims in the IPR2013-00065 case.

[pullquote align=”left|center|right” textalign=”left|center|right” width=”30%”]35 U.S.C. § 325(d) — “…during the pendency of any post-grant review under this chapter, if another proceeding or matter involving the patent is before the Office, the Director may determine the manner in which the post-grant review or other proceeding or matter may proceed, including providing for the stay, transfer, consolidation, or termination of any such matter or proceeding. In determining whether to institute or order a proceeding under this chapter…the Director may take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office.”[/pullquote]The ‘311 patent describes a thin film transistor (TFT) and a method for forming the transistor. The patent described numerous problems associated with prior art methods of crystalizing amorphous silicon layers used in devices. The patent went on to claim that layer crystallization by laser irradiation of semiconductor materials in the channel region and the activation of the ohmic contact region of the source and drain provides improvements in electrical conductivity and avoids the prior art problems.

Patent Owner’s primary argument was based on the fact that, during prosecution of the application leading to the ‘311 patent, the Examiner previously considered all of the same prior art references. Following a now established trend, the Board rejected Patent Owner’s arguments because they failed to show that the Examiner considered substantially the same arguments – namely that Petitioner included evidence not considered by the Examiner, such as the Petitioner’s expert declaration. Order at 7. The Board has set a very high hurdle for any Patent Owners who wish to dismiss an inter partes review by arguing that the prior art references have been previously considered.  To date, no argument based on 35 U.S.C. § 325(d) has been adopted by the Board.

Echoing an argument tried in other IPRs involving the same parties, the Board also rejected Patent Owner’s argument that Petitioner failed to identify all real parties-in-interest, arguing that other defendants in co-pending litigation joined in a motion to stay pending the outcome of the present inter partes review and agreed to be bound by its outcome. The Board found that the other defendants did not need to be listed as real parties-in-interest because they did not have any control over the proceeding. Order at 8.

As a last procedural issue, the Board considered Petitioner’s “administrative estoppel” argument, based on the fact that a sister patent was reexamined and that proceeding resulted in many invalidated and canceled claims. At this stage of the proceeding, however, the Board declined this argument, finding that Petitioner had not shown the claims to be patentably indistinct. Order at 9.

After dispensing with the above-procedural issues, the Board provided only a brief claim construction analysis, simply adopting a prior district court construction of “overetching.”  Then, in its obviousness analysis, the Board rejected Patent Owner arguments that: 1) there was no motivation to combine the underlying references (Order at 14-15); 2) as such, the reference taught away from combination (Order at 15), 3) that a combination would render a reference disabled or unfit for its intended purpose (Order at 15), 4) that there would be no need to combine because a problem was already solved (Order at 16), and 5) that the combination would be impossible to manufacture (Order at 16-17).

In the end, although the same patent was spread out over two IPR cases, the Board granted trial on all challenged claims – ignoring a prior determination at the Patent Office based on the rationale that an expert declaration provided with the Petition was new evidence that precluded the applicability of 35 U.S.C. § 325(d).

27 for 28: Expert Witness Provides Deciding Testimony in Grant of Two Inter Partes Review Trials

eyedroppersApotex has successfully forced two Alcon Pharmaceuticals patents into inter partes review trials (HERE and HERE), in cases styled as Apotex Inc. v. Alcon Pharmaceuticals, Ltd. (IPR2013-00012 and IPR2013-00015), involving US Patent Nos. 6,716,830 and 7,671,070. In each case, all challenged claims were put into trial.

The technology involved in the ‘830 and ‘070 patents involves compositions containing a “new” class of antibiotics (e.g., moxifloxacin) to treat ophthalmic, otic, and nasal conditions, or for prophylactic use, by topically applying the compositions to affected tissues. The claims at issue were specifically directed to ophthalmic conditions.

Both decisions are based on the same underlying facts and arguments and are, as such, treated together herein.

The most relevant claim construction dispute between the parties was the term “pharmaceutically acceptable vehicle.” Rejecting Patent Challenger’s construction, the Board determined the broadest reasonable interpretation to be a vehicle that is acceptable for use as a topical ophthalmic pharmaceutical composition, i.e., any excipient(s) that can be safely used in the eye, such as saline.  Order at 7.

The Patent Challenger’s expert witness declaration played a key role in the these cases, as the Board cited to the declaration on more than one occasion to explain the understanding of a person of ordinary skill in the art, for both discussion of the prior art references and the obviousness analysis. It is also interesting to review the qualifications that the Board found persuasive in the Expert’s declaration, including educational background, scientific investigations in the relevant art, publication history, etc.  Order at 8, n.2.  Based on the opinions proffered by the expert, the Board concluded that Patent Challenger demonstrated a reasonable likelihood of prevailing that at least claim 1 was obvious.

In so concluding, the Board discarded Patent Owner’s arguments that the prior art references taught away from using moxifloxacin topical ophthalmic compositions, including an argument that moxifloxacin presented a risk of toxicity. The Board again found Patent Challenger’s expert opinion to be credible; specifically, that moxifloxacin was safe and effective for ophthalmic use and the prior art as a whole would not have discouraged a skilled artisan from producing a topical ophthalmic moxifloxacin pharmaceutical composition. Patent Owner also tried to argue additional objective indicia of nonobviousness, including unexpected results, meeting a long-felt need, commercial success, and skepticism by experts, but the Board was not persuaded by any of those arguments.

The Board did however deny Patent Challenger’s anticipation challenge because the prior art range of 0.5 to 95 wt. % was sufficiently different than the 0.1-1.0 wt. % limitation of the claims of the ‘830 and ‘070 patents. The teachings of the prior art were also not expressly tied together in a meaningful manner, because the reference did not specifically relate the formulation concentration to moxifloxacin or relate its teaching to ophthalmological formulations. The Board cited Finisaar Corp. v. DirecTV Group, Inc., 523 F.3d 1323 (Fed. Cir. 2008), that while a prior art reference does not necessarily have to provide an example of the claimed invention, the teachings in the reference relied upon by Patent Challenger were unconnected to the extent that they did not anticipate the claims of the ‘080 and ‘071 patents.

In summary, the Board granted both trials on all claims based on one challenge ground of obviousness. Interestingly, the board denied all other obviousness challenge grounds as cumulative without specifically addressing them, furthering the debate about how these ‘cumulative’ grounds will be treated in the future if the granted grounds prove unsuccessful.

20 for 21: First of Three Micron Tech Inter Partes Review Trials Instituted

iStock_000011002999XSmallThe PTAB’s pace, in its decisions relating to the institution of inter partes review trials, is picking up steam…and that is not good news for patent owners. The first of three decisions instituting an inter partes review trial based on a petition brought by Micron Technology was granted in the IPR styled Micron Technology, Inc. v. The Board of Trustees of the University of Illinois (IPR2013-00005), involving US Patent No. 6,444,533. The Board instituted the trial on all 8 claims of the patent based on four of 24 proposed grounds.

As described in more detail below, this decision by the PTAB touches upon issues relating to: 1) entering a priority document for the patent-at-issue as an exhibit; 2) the inclusion of witness testimony from the prosecution of the patent; 3) art previously considered by the Patent Office during examination; 4) specific claim construction issues; 5) teaching away; and 6) unexpected results.

The subject matter of the ‘533 patent involves methods of treating a semiconductor device by passivating (or annealing) the device with deuterium, an isotope of hydrogen. It is interesting to note that the Board commented upon the lack of evidence provided by Patent Owner regarding the priority date of the patent-at-issue. It is unclear if the Board is suggesting that is a requirement in the future, but it bears monitoring. Order at 4, n.4.

Patent Challenger offered numerous prior art references, including testimony that was originally entered in the prosecution record and art that was previously considered by the Office during prosecution of the subject patent. Patent Owner tried to keep that old art out of the IPR proceeding, pursuant to 35 USC §325(d), but the Board declined that request: “we are not required by statute to reject a petition based upon the fact that certain arguments or art were previously considered by the Office…” The Board found that the record in this proceeding differed from prosecution, given that the art was considered here in view of an expert declaration proffered by Patent Challenger. Is an expert declaration, therefore, the magic elixir that prevents the application of §325(d)?

The Board’s treatment of claim construction offered an interesting recap of the parties positions. At threshold, Patent Challenger included in its position a statement that the claims should be given their broadest reasonable interpretation. Patent Owner responded by suggesting that such a position was improper given that Patent Challenger proffered a different interpretation in litigation and the Trial Practice Rules require that “where a party believes that a specific term has meaning other than its plain meaning, the party should provide a statement identifying a proposed construction of the particular term and where the disclosure supports that meaning.” 77 Fed. Reg. 48764. This is a very interesting argument that may have the potential to force a Patent Challenger to adhere to litigation positions. Despite the creativity of the argument, though, Patent Owner failed to actually include those litigation positions as an exhibit to its Preliminary Response and, as such, the Board could not take them into consideration in its decision. Order at 9-10.

Among the grounds the Board granted was obviousness in view of a single reference. The Board found that the reference lacked one of the steps of the claimed method, but that the testimony of Patent Challenger’s expert provided that missing step. Order at 11. This is certainly a helpful development for patent challengers and underscores the importance of expert declaration testimony.

Lastly, the Board addressed, but ultimately discarded, arguments relating to “teaching away” and “unexpected results” that were proffered by Patent Owner. Regarding teaching away, the Board found the argument unpersuasive because it was at odds with a reading of the entire specification of the prior art. Although one excerpt may have suggested the reference taught away, a more complete reading undercut that position. Order at 13. Regarding unexpected results, the Board again found Patent Owner’s evidence presentation to be lacking. The Preliminary Response “does not cite to the prosecution history of the ‘533 patent in support of [the unexpected results] argument or otherwise direct us to evidence sufficient to show unexpected results.”

In the end, rack up another victory for Patent Challengers as the 20th IPR trial takes flight.

19 for 20: Tire Pressure-Monitoring Patent is 19th Put Into Inter Partes Review Trial

OLYMPUS DIGITAL CAMERASchrader-Bridgeport was successful in forcing a patent owned by Continental Automotive Systems US into an inter partes review trial, in the case styled as Schrader-Bridgeport International, Inc. v. Continental Automotive Sys. US, Inc. (IPR2013-00014), involving US Patent No. 6,998,973.  The Board granted the IPR trial based on all 10 challenged claims and on one of 9 grounds for challenge.

The subject matter of the ‘973 patent involves a data transmission method for a tire-pressure monitoring system of a vehicle.  More particularly, the method prevents data collisions from the various wheel units of an automobile through the use of internal clocks in each wheel unit.  The main dispute between the parties involved the last clause of independent claim 1, including the terms “natural time lag” and “used to prevent collisions.”

Starting with the step of claim construction, the Board noted that Patent Challenger’s claim construction of “natural time lag” corresponds to a position taken by Patent Owner in concurrent district court litigation.  That definition, which Patent Owner urged the Board to adopt for purposes of this IPR, comprises “sensors with any amount of imprecision, even lower than +/- 1%, creates a sufficient ‘natural lag’ to be covered by the claim.”  Because the Board could not discern how this definition aligned with a litigation position, or why the +/- 1% limitation should be included, it found that the proposed construction was overly broad in light of the patent specification.  Instead, the Board looked to the specification and found that one of ordinary skill would have understood that term to mean that tolerance of the clocks is sufficiently poor so as to automatically and randomly induce time shifting of transmission from the clocks.  Order at 8.

Turning to the term “used to prevent collisions,” the Board agreed with the definition proposed by Patent Challenger; namely that the occurrence of collisions is reduced. All other terms in the challenged claims were given their ordinary and customary meanings.  Id.

Having construed the above-two terms, the Board turned to the issue of anticipation, noting that Patent Challenger’s arguments relied upon implicit disclosures.  That is, Patent Challenger relied upon inherency.  Order at 10.  With regard to the first reference at issue, the Board found that Patent Challenger’s inherency argument neglected to consider the entirety of the teachings of the reference.  In light of that more complete analysis, the disclosure would not necessarily function in a manner consistent with the claimed invention.  MEHL/Biophile International Corp. v. Milgraum, 192 F.3d 1362, 1365 (Fed. Cir. 1999) (“Inherency” requires that a given fact must necessarily result, and not be established based on mere probability or possibility).  Order at 12.  Relatedly, the Board found that the second reference upon which Patent Challenger asserts under an inherency theory was similarly insupportable.  Order at 13.

The Board was more persuaded, however, by Patent Challenger’s grounds for challenge based on obviousness.  The Board’s analysis overcame Patent Owner’s arguments that the combinations at issue were: 1) based on non-analogous art, 2) taught against the combination, and 3) there was “no reason” to combine.  With respect to the non-analogous art argument, the Board found that, while the art may not have been in the same field of endeavor, the test for whether a reference is analogous could, alternatively, be based on the fact that the reference is reasonably pertinent to the particular problem at issue.  Wyers v. Master Lock Co. 616 F.3d 1231, 1238 (Fed. Cir. 2010).  Order at 17.

The Board also found the “teaching away” argument to be unavailing.  Order at 18.  While the art at issue may recognize a particular preferred benefit, the reference did not criticize, discredit, or otherwise discourage investigation into other viable benefits.  DePuy Spine Inc. v. Medtronic Sofamor Danek, 567 F.3d 1314, 1327 (Fed. Cir. 2009).  Lastly, the board denied that there was “no reason” to combine the teachings of the subject references.  Because the combination constituted implementing known teachings concerning the basic technology at issue, this reasoning by Patent Owner was not given weight.  Order at 18-19.

In the end, the IPR trial was instituted based on a number of obviousness grounds.  Other grounds, deemed redundant to the above-discussed grounds, were denied.  Interestingly, the Board did provide additional background on this point, as compared to earlier decisions.  Specifically, the Board suggested that, if it did not succeed on the grounds put into the trial, Patent Challenger would likely fail with regard to the other grounds, as well.