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.

34 for 36: Second Petition for Inter Partes Review Denied!

In an IPR miracle, Denso Corporation was unsuccessful iStock_000013618133XSmallin forcing any of 17 challenged claims of a Beacon Navigation patent into an inter partes review trial, marking just the second time that a petition seeking inter partes review was denied. The case is styled Denso Corporation v. Beacon Navigation GmbH (IPR2013-00027), involving US Pat. No. 5,862,511. The Board denied all 60 challenge grounds put forth by the Patent Challenger for failure to demonstrate a reasonable likelihood that one or more of the challenged claims is unpatentable.

The ‘511 patent describes a navigation system and method in which a GPS-derived velocity vector including speed and heading components is used for propagating a “previous position” to a “current position.” If a GPS-derived velocity vector is not available, speed and heading information derived from an orthogonal axes accelerometer and other sensors is used to propagate vehicle position. Because the GPS information is almost always available, less reliance on accelerometers is needed, thereby allowing the use of less expensive accelerometers. The accelerometers are repeatedly calibrated using the GPS-derived velocity data.

After briefly discussing related matters and claim construction, the Board proceeded to analyze each of Patent Challenger’s grounds for challenge. To that end, the Board picked apart each of the 102 grounds propounded by Patent Challenger, finding that, in one way or another, the cited references failed to disclose one or more limitations from the challenged claims.  For example, one reference (Odagawa) failed to disclose the limitation of correcting the GPS-derived velocity vector by rotating it in accordance with map data or otherwise. Order at 9.  Similarly, another reference (Klein) failed to disclose that the velocity vector heading must be corrected by reference to map data before that velocity vector is used to propagate a position to a current position. Lastly, a third reference (Anderson) failed to describe “correcting the heading portion of a velocity vector at all, much less using the corrected velocity vector to proagate a previous position to a current position.”  Order at 17.  Other purported 102 references were similarly found lacking one element or another from the challenged claims.

Interestingly, the Board also commented on an obviousness challenge made by Patent Challenger, in connection with the Anderson reference, that contained a “catch all” statement.  Order at 17-18.  Specifically, Patent Challenger tried to assert that “any claim element…not found in the references…would be predictable and obvious to one of ordinary skill in the area of navigation systems.”  But, the Board found this summary argument unpersuasive. Patent Challenger must carry the burden of establishing a reason for unpatentability sufficient to meet the threshold for instituting a trial.  Such “catch all” statements are insufficient to meet the threshold for instituting a trial.  Order at 18.

In the end, this petition failed, where so many others succeeded, because Patent Challenger did not adequately indicate where each and every limitation of the challenged claims was contained in the multitude of 102 references.  Further, Patent Challenger did not put forth sufficient evidence to support its 103 contentions.  As a result, the Board denied all 55 anticipation challenge grounds and all 5 obviousness challenge grounds.

29 for 30: §112 Challenges to Priority Date Considered in Institution of Inter Partes Review Trials

3D atoms backgroundNissan successfully forced two inter partes review trials (HERE and HERE) against patents owned by the University of Texas in cases styled as Nissan N. Am., Inc. v. Board of Regents, The University of Texas System (IPR2012-00035 and IPR2012-00037), involving US Patent Nos. 5,411,797 and 5,478,650.  All challenged claims were put into trial in each case.

The subject matter of the ‘797 and ‘650 patents is directed to amorphous or diamond-like materials that are substantially free of graphite and hydrogen, which are especially suited for use in the electronics industry due to desirable properties such as physical hardness, electrical strength, high thermal conductivity, and optical transparency.  Given the substantial overlap in the Board’s discussion of these two patents, the decisions instituting an IPR for each patent are discussed together below.

The Board started with a claim construction analysis and agreed with prior District Court constructions that were submitted by Patent Challenger and surprisingly supported by Patent Owner. Next, the Board addressed the Patent Owner’s argument that the Patent Challenger’s expert declaration was unsupported by any underlying facts and inconsistent. The Board agreed and stated that it would give the declaration “little, if any, weight,” which signals a warning to future Patent Challengers to be careful that their expert declarations are factually supported and do not contain inconsistencies.

The Board next addressed Patent Challenger’s argument that the ‘797 and ‘650 patent claims were not entitled to a priority date of an earlier filed application. The Board conducted a Section 112 analysis solely to determine whether some of the cited references were “prior art.” The Board considered three separate limitations and determined that there was not sufficient disclosure in the earlier filed application for two of the limitations. For example, “the broad disclosure of ‘less than 1000 Angstroms’ for the diameter of the fine-grained clusters disclosed int he ‘155 Application does not necessarily provide support for the less than 500 Angstroms or less than 200 Angstrom limitations recited in the claims.”  Order at 10.  Patent Owner was, therefore, not entitled to the benefit of the priority filing date based on those two limitations. Although inter partes review is limited to Section 102 and 103 grounds of invalidity, Patent Challengers may argue against claims to priority filing dates and the Board will be willing to hear them.

Turning to the patentability analysis, the Board separated its analysis of the prior art references based on the contested priority date, but ended up finding a reasonable likelihood of success based on references from both before and after the contested priority date. The Board granted trial on some anticipation grounds, but denied others as redundant. Interestingly, Patent Challenger made a statement at the end of the description of each challenge that if the Board did not find anticipation as to any of the references, the Board should consider Section 103 grounds of unpatentability based on some combination of the other cited references of record. However, the Board found this to be a failure to present a sufficient obviousness challenge because no limitations were identified with any specificity.

In the end, the Board granted trial on all three claims of each of the ‘797 and ‘650 patents based on multiple anticipation grounds, from both before and after the contested priority date, but denied other 102 grounds as redundant and denied 103 grounds as lacking any specificity. Among the lessons learned here are: (i) that expert opinions should be factually supported and consistent, (ii) that priority filing date claims can be contested, and (iii) that Section 103 grounds should be challenged specifically and not generally.

23 for 24: PTAB Provides Guidance on Petition Drafting in Instituting 23rd Inter Partes Review Trial

Denso and Clarion were successful in getting half of the claims of a patent owned by Beacon Navigation into an inter partes review trial, in the case styled as Denso Corp. and Clarion Co. Ltd. v. Beacon Navigation GmbH, IPR2013-00026, involving US Patent No. 6,029,111. The Board granted the IPR trial for 14 of the 28 challenged claims based on 4 of the 8 references presented by the Patent Challenger. The remaining claims were not placed into the IPR trial, marking one of the relatively few decisions in which an IPR trial was only granted for some of the challenged claims. It is also an unusual case because the Patent Challenger only challenged the ‘111 patent on anticipation grounds, with no obviousness grounds at all.

The subject matter of the ‘111 patent describes a navigation system in which information from a GPS is used to obtain velocity vectors, which include speed and heading components, for propagating or “dead reckoning” the vehicle position from a previous position to a current position. The current position is calculated by adding displacements obtained from the GPS velocities to the previous position. GPS position data alone is not accurate enough for certain applications, but GPS velocities are much more accurate than the position data and can be sued to propagate a known solution forward and be more accurate over time then the GPS position solution.

The Board first noted that ordinary and customary meaning would be used for all claim terms because Patent Challenger did not provide any proposed constructions.  In so holding, the Board softly criticized the petition, pointing out that the Petition relied largely upon claim charts, but lacked sufficient discussion and explanation of the unpatentability arguments upon which Patent Challenger relied:

Relying on claim charts with little or no supporting discussion or explanation assumes that the anticipation contentions are self-evident from them.  That is usually not the case, especially where, as here, the technology is complex.  That is why our rules state: “The Board may exclude or give no weight to the evidence where a party has failed to state its relevance or to identify specific portions of the evidence that support the challenge.”  37 C.F.R. § 42.104(b)(5).

The Board’s comment certainly provides a caution for patent challengers, especially in complex technology areas.  While page limitations can be a concern, it is not advisable to simply present unpatentability contentions in claim chart format. Instead, the claim chart should be accompanied by detailed explanation of the arguments contained in the claim chart, including the positions taken by Patent Challenger’s expert.

Moving beyond the claim construction and drafting issues, the Board ultimately decided that some of the proposed anticipation grounds met the reasonable likelihood standard.  In this regard, the Board made several potentially noteworthy conclusions, indicating the types of arguments and evidence the Board may be willing to rely on in deciding anticipation challenge grounds. As to claim 1, the Board took note of a “well-known calculus/physics principle” that integrating velocity yields a position displacement. Order at 19. As to claim 2, the Board found that even though “east” and “north” displacements were not explicitly recited in the anticipating reference, they were inherently disclosed because a velocity vector can have any direction. As to claim 6, the Board cited to a declaration submitted by the Patent Challenger in determining that there was a reasonable likelihood of prevailing for that claim. Order at 20-21.

The Board continued to stress the importance of additional argument beyond claim charts by finding no reasonable likelihood of prevailing as to claim 1 under one particular reference, “in the absence of any analysis from Petitioners above and beyond what is set forth in the claim charts.” Order at 29. There was one instance, however, in which the Board conducted their own review of a translated foreign reference which was only mentioned in the petition in claim charts that generally referred to certain pages of the foreign reference without any explanation. Order at 42. The Board did find a reasonable likelihood of prevailing on some of the claims, but not all, based on the foreign reference.

In the end, the IPR trial was instituted for only half of the claims, using only half of the asserted references for those claims. Interestingly, the Board did not deny any grounds based on redundancy, but instead made specific findings for every ground for each reference as to whether all elements of the claim were disclosed in the reference. The Board actually granted four different grounds based on four different anticipating references for many of the claims which were put into the IPR trial.

Stay tuned….while the faulty petition may have been the cause of numerous grounds for unpatentability being denied, the Board noted in its decision that there are 18 pending district court litigation matters relating to the patent-at-issue.  Guidance from the Board may lead one or more of the other defendants to retry the denied grounds.

Grounds in Inter Partes Review Petitions Must Be Specific

The divergence of inter partes review practice and reexamination practice continues to show itself in the PTAB’s rulings. In a series of 8 inter partes review petitions filed by Oracle Corporation against patents owned by Clouding IP, LLC, the Board denied a number of proposed grounds for unpatentability, finding that they were not specific enough.

The Board found that the practice, that is sometimes undertaken in reexamination practice, of generically stating that other prior art combinations may also be used does not meet the requirements of IPR practice. More specifically, the Board found that the petition contained alleged grounds for unpatentability that extend beyond those “specifically identified and particularly discussed” in the petition. Further, the petition contained “unspecified combinations of prior art.”

The Board denied all grounds that were based on these generic allegations, noting that inter partes review was a trial, not reexamination or continued prosecution, and Patent Challenger bears the burden of proof.  As such, Patent Challenger was incorrect in referring to an alleged ground of unpatentabiltiy as a proposed rejection made by the Board.  Instead, it was incumbent on Patent Challenger to identify with particularity the challenged claim, grounds, and evidence, that were being used to meet Patent Challenger’s burden. In short, the requirements of 37 CFR §104 had not been met because vague and general allegations cannot meet the “reasonable likelihood” standard.

While the Board issued 8 separate Orders, because each Order had to specify which grounds from each IPR were being dismissed, the rationale was the same in each and, as such, we include only one exemplary Order HERE.

Eleventh Inter Partes Review Trial Instituted

The Patent Owner winning streak, for repelling inter partes review challenges, was halted at just one in view of the Board’s institution of an IPR trial in the proceeding styled as Synopsys, Inc. v. Mentor Graphics Corp., (IPR2012-00042), involving US Patent No. 6,240,376. The Board instituted an inter partes review trial with regard to 12 of the 29 proposed claims, using one (anticipation) of the 11 proposed grounds. This record 41 page order is loaded with aspects of IPR practice that are worth noting.

The subject matter of the ‘376 patent claims is the simulation and prototyping of integrated circuits. The Board started its analysis at a logical starting point – claim construction. At threshold, the Board made a point of emphasizing that no claim construction is necessary for terms if one of skill in the art would recognize the ordinary and customary meaning of those terms.  Citing Biotec Biologische v. Biocorp, Inc., 249 F.3d 1341, 1349 (Fed. Cir. 2001) (finding no error in non-construction of “melting”); Mentor H/S, Inc. v. Med. Device Alliance, Inc., 244 F.3d 1365, 1380 (Fed. Cir. 2001). The Board found that many terms in the challenged claims did not require construction for this reason.

Other terms, however, required construction, including “instrumentation signal,” “gate-level netlist,” “gate-level design,” and “sensitivity list.” To come to its opinion regarding claim scope, the Board relied upon two claim construction principles that are worth noting. First, regarding the first three of the above-listed terms, the Board noted that the terms were not explicitly defined in the specification, but found that the specification (including the examples) did contain useful context that would help define the terms. Thus, using the specification as a claim construction guide, the Board synthesized the various relevant specification excerpts to develop claim constructions of the relevant terms. Second, in defining “sensitivity list,” the Board determined that its construction was informed by certain dictionary definitions relevant to that limitation, citing to both an online definition and an IEEE reference.

Using these defined terms, the Board instituted an inter partes review trial on 12 of the 29 proposed claims, using one of the 11 proposed grounds.

Turning to its decision to institute an IPR trial, the Board first considered Patent Owner’s argument that the petition was statutorily-barred in view of 35 USC §315(b). Per that section of the Patent Act, an inter partes review may not be instituted if the petition was filed more than one year after the service of a federal court complaint alleging infringement of the subject patent. Here, the Patent Owner served a complaint on a third party company over five years earlier. That third party had since become a subsidiary of Patent Challenger and, thus, per Patent Owner, the challenger and third party were in privy with one another, preventing the filing of the petition.  The Board disagreed with this argument, finding that Patent Challenger was not a privy of the third party at the time the third party was served with the federal court complaint. Further, no evidence was even submitted that showed privity between the parties at the time the petition was filed. While Patent Owner argued that the relevant time for the analysis is the date on which the IPR is instituted, the Board again disagreed.  Privity is measured as of the date of the filing of the petition.

Having cleared the statutory bar argument presented by Patent Owner, the Board proceeded to consider each of the 11 grounds of unpatentability set forth in the petition by Patent Challenger. In general, however, the Board based its denial of most proposed anticipation grounds on the all elements rule and denied all obviousness grounds in view of Patent Challenger’s failure to identify with particularity the basis for its obviousness argument. See, e.g., Order at 21 (“Petitioner asserts, in a single sentence, that [the prior art reference], by itself, renders claims 1-5, 8-10, 20-24, 28, 32, and 33 obvious under 35 U.S.C. §103….Petitioner does not explain the reasoning behind this assertion.”).

But, among the arguments submitted by Patent Challenger, was an unpatentability ground that was based on a prior art brochure. The interesting issue was whether the brochure was actually a printed publication because it did not include any indication of when it was created or whether it was publicly disseminated. Patent Challenger had asserted that it was published at least as early as July 9, 1996 because it was filed in an Invention Disclosure Statement on that date. But, Patent Owner responded that inclusion on an IDS was insufficient to provide proof of publication and the file history for the patent did not become public until the patent issued, on November 17, 1998. Based on these facts, the Board agreed with Patent Owner that the brochure was not a printed publication.  Patent Challenger had simply failed to adequately prove that the brochure was publicly-available during the relevant time frame.  Order at 36.

Lastly, it is worth noting that in another portion of the Board’s decision, it denied certain obviousness grounds because “[Patent Challenger] does not address why a person of skill in the art would have combined the two references.” Order at 34. This is yet another indication that it is essential to include expert testimony with any petition to ensure an adequate basis for any proposed unpatentability grounds.

In the end, the Board granted yet another IPR trial, but did so only after an exhaustive review of various challenges by both parties.  Most beneficial for future inter partes review participants is the fact that this analysis yields many insights into IPR practice that will inform later proceedings.