Third IPR Petition Directed to Same Patent Denied under 35 U.S.C. § 325(d)

17934850_sOne of the advantages for Petitioners of inter partes review practice, to date, is the PTAB’s willingness to reconsider prior decisions by the Patent Office relating to patentability. Previous Office determinations of patentability in examination, ex parte reexamination, and inter partes reexamination are often given little deference in IPR proceedings. But even the Board can only take so much. In Medtronic, Inc. v. Nuvasive, Inc., IPR2014-00487, Petitioner failed in its third bite at the apple for a patent that was previously challenged by IPR petition. Order at 5.

According to Patent Owner, the Petition was “essentially a duplicate of the previously denied petitions,” and should be denied pursuant to 35 U.S.C. § 325(d). Id. Petitioner argued that the denial of the old Petition had no bearing on this case. Id. at 6. The revised Petition directly responded to a “noted deficiency,” and new evidence and argument were provided to cure that deficiency.

The Board agreed with Patent Owner, beginning its analysis by citing to § 325(d): “[i]n determining whether to institute or order a proceeding under this chapter, chapter 30, or chapter 31, 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.” 35 U.S.C. § 325(d). Id.

In view of the fact that Petitioner did not provide any persuasive reasoning as to why an inter partes review should be instituted over “the same or substantially the same prior art or arguments” that were presented in the old Petitions, the Petition was denied. Id. at 7.

§ 325(d) Used by the Board to Deny Petitions for Inter Partes Review

iStock_000011114669SmallWe wrote yesterday about the Board’s willingness to come to a different conclusion than that of the original patent examiner on the adequacy of a 131 declaration.  Further, we have discussed in the past how the Board has been more than willing to reconsider arguments and art that were previously before the Patent Office.

It is fair to point out, therefore, that the Board is sometimes willing to provide deference to previous decisions.  In Unilever, Inc. v. The Procter & Gamble Co., IPR2014-00506 and IPR2014-00507, the Board denied two petitions for inter partes review because substantially similar arguments were presented (and denied) in previous IPRs.

In the previous proceeding (IPR2013-00505), Unilever had challenged 33 claims of the patent-at-issue. The petition was denied as to several challenged claims of the patent-at-issue, and Unilever subsequently challenged the denied claims again in IPR2014-00506, following an unsuccessful Request for Rehearing. Unilever further requested joinder of the ‘506 proceeding with the much earlier ‘505 proceeding.

Pursuant to 35 U.S.C. § 325(d), the Board is permitted to deny petitions that raise substantially the same prior art or arguments previously presented to the Office. In applying the facts of the ‘506 proceeding to this statutory provision, the Board made several key observations:

(1) The later ‘506 proceeding challenged each of the claims that were denied review in the earlier ‘505 proceeding;
(2) The later ‘506 proceeding involved thirteen pieces of prior art, six of which were also included in the ‘505 proceeding;
(3) Patent Owner provided no evidence or indication that the references that were new in the ‘506 proceeding were not available at the time of the filing of the ‘505 proceeding;
(4) Nine of the thirteen grounds of unpatentability in the ’506 proceeding rely, at least in part, on references presented in the ‘505 proceeding; and
(5) There were several arguments in the ‘506 proceeding which mirrored the same deficient arguments of the ‘505 proceeding, with the only difference being reliance on new prior art which did not strengthen the deficient arguments.

Accordingly, based on these facts, the Board rejected the petition in the ‘506 proceeding as raising substantially the same prior art or arguments previously presented in the ‘505 proceeding, pursuant to 35 U.S.C. § 325(d).

The Board addressed nearly identical issues in IPR2014-00507. In a previous proceeding (IPR2014-00509), Unilever had previously challenged several claims of the ‘300 patent. The petition was denied as to several challenged claims of the ‘300 patent, and Unilever subsequently challenged these denied claims in IPR2014-00506 following an unsuccessful Request for Rehearing. Unilever further requested joinder of the ‘507 proceeding with the ‘509 proceeding.  Using a substantially similar analysis as that presented in the ‘506 proceeding, the Board rejected the petition in the ‘507 proceeding as raising substantially the same prior art or arguments previously presented in the ‘509 proceeding under 35 U.S.C. § 325(d).

Attorney Argument in Preliminary Response Continues to be Trumped by Expert Evidence from Petition

DroppingChallenging two patents with a common parent application, Butamax Advanced Biofuels was able to get 28 challenged claims of one Gevo patent and 18 challenged claims of a second into separate trials for inter partes review, in cases styled as Butamax Advanced Biofuels LLC v. Gevo, Inc. (IPR2013-00214 and IPR2013-00215), involving U.S. Pat. Nos. 8,304,588 and 8,283,505.

The duo of patents both relate to a “method for recovering C3-C6 alcohols, including isobutanol, from dilute aqueous solutions, such as fermentation broths.”

The Board in both cases dealt with a handful of preliminary issues before delving into the analysis. The first issue regarded whether DuPont should have been named as a real party-in-interest by Patent Challenger. The Board rejected Patent Owner’s argument that inter partes review should be barred because of this issue, reasoning that the mere fact that DuPont and Butamax (who have board of directors’ members in common, among other tangential ties) share a common interest in the two patents does not necessarily make DuPont a real party-in-interest.  The real party-in-interest inquiry is “fact-dependent” and Patent Challenger simply had not set forth persuasive evidence of DuPont’s ability to fund or direct the proceeding.  IPR2013-00214 Order at 4.  This issue is, of course, challenging for a Patent Challenger to prove in light of the Board’s high burden to obtain “additional discovery” that would help provide the persuasive facts for this fact-dependent inquiry.

The Board then rejected Patent Owner’s argument that inter partes review should be barred because the references relied upon and the arguments utilized were previously considered by the Examiner. In discounting Patent Owner’s argument, the Board simply stated that Patent Challenger’s arguments had merit. IPR2013-00214 Order at 5.

To conclude the preliminary matters, the Board rejected Patent Owner’s argument that expert testimony should be discredited because it was provided by an expert with a business relationship with DuPont (an alleged unnamed real party-in-interest), citing the expert’s qualifications and persuasive testimony. IPR2013-00214 Order at 6.

The Board’s analysis of the merits of the petitions contained a few interesting points.  For example, in the 214 proceeding, the Board deemed the preambles of the challenged claims limiting, especially given that a portion of the preamble provided antecedent basis support for certain of the dependent claims. IPR2013-00214 Order at 9.

In the 215 proceeding, the Board considered Patent Owner’s argument that, by modifying one prior art reference’s disclosed process by including as step from another reference, the fundamental principles of operation of the process would be changed.  Thus, per Patent Owner, the proposed modification would render the prior art invention inoperable.  IPR2013-00214 Order at 11.  The Board discounted this argument based on the rational that Patent Owner’s “argument improperly is based on what each reference teaches separately, and not on the teachings of the combined references.”  Id.  More specifically, the Board relied on the Federal Circuit’s decision in In re Keller, 642 F.2d 413, 425 (CCPA 1981) to not require “bodily incorporation” of a secondary reference into a primary reference.

This decision shows why there is a growing trend in IPR practice to waive the Patent Owner Preliminary Response or, at the least, to not focus on the merits of, for example, an obviousness analysis.  Time and again in the Board’s decision, it discounted the attorney argument of Patent Owner and referred, instead, to the declaration testimony of Patent Challenger’s expert.  Clearly, expert evidence, if properly presented, is provided great weight, as compared to mere attorney argument (and no expert testimony is, of course, allowed in such a Preliminary Response).  As such, Patent Owners are reconsidering the forecast of arguments that could be made in the formal response to the petition, when expert testimony may be provided, given that the Board is not giving much weight to those arguments in the Preliminary Response.

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.

 

Shoe Wars Reach PTAB as Inter Partes Review Brought by Adidas is Granted Against Nike Patent

Pair of sneakersChallenging a patent of a major industry rival, Adidas was able to get all 46 challenged claims of a Nike patent into a trial for inter partes review in a case styled as Adidas AG v. Nike, Inc. (IPR2013-00067), involving U.S. Pat. No. 7,347,011.

The ‘011 patent relates to footwear having a textile upper. More specifically, the patent discloses said upper incorporating a knitted textile element and having a sole structure secured to the upper.

The Board’s claim construction analysis was notable in that it first took Petitioner to task relating to its proposed construction of “single type of textile” because Petitioner’s definition “simply introduces a new term…which does not appear in the claim, for construction.”  Order at 12.  Instead, relying upon two dictionary definitions, the ‘011 patent specification, as well as other claims of the ‘011 patent, the Board formulated its own claim construction the specific “type” of textile to be used.  The claim construction analysis for the other claim terms-at-issue was similarly detailed and heavily relied upon intrinsic evidence.

Patent Owner chose a well-worn, and typically unsuccessful, path in arguing that the prior art references at issue were previously considered by the Patent Office and/or are cumulative to what was considered.  The Board again, however, gave this argument little weight, finding that Petitioner “presents different arguments and new supporting evidence that were not before the Examiner.”  Order at 17.

In the end, the Board instituted an IPR trial based upon two primary references, pursuant to grounds that alleged both anticipation and obviousness – the Board holding that “[b]ecause anticipation is the epitome of obviousness, a disclosure that anticipates under §102 also renders the claim unpatentable under §103.”  Order at 36.

Priority Date of Challenged Patent Sustained by Board, But IPR Trial Still Instituted on Other Grounds

Technology background with electronic circuit Remote panelContinuing its challenges of Roy-G-Biv patents, ABB was successful in getting all 5 challenged claims of another Roy-G-Biv patent into a trial for inter partes review, despite the fact that a key reference was excluded as “prior art” because the patent-in-suit was given the priority date of its parent application, in a case styled as ABB Inc. v. Roy-G-Biv Corp. (IPR2013-00063), involving U.S. Pat. No. 6,513,058.

The ‘058 patent relates 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.

The most interesting portion of the Board’s decision related to the priority date of the ‘058 patent. Patent Challenger alleged that the ‘058 patent was not entitled to the priority date of its parent application, bringing into play certain prior art references.  More specifically, Patent Challenger asserted that the document to which the ‘058 patent claimed priority did not provide written description or enablement for all of the claim limitations of the ‘058 invention. After performing a detailed examination of the file history of the ‘058 patent, the Board rejected Patent Challenger’s argument and confirmed that the 058 patent was entitled to its earlier priority date.  The Board’s decision was based on a detailed analysis of the disclosure in the earlier filing, as well as a broad reading of that disclosure – seemingly consistent with the broad standard provided to patent claims in IPR proceedings.  In the end, the Board’s decision helped Patent Owner narrow the scope of Petitioner’s challenge, by eliminating a primary reference from the Petition.

Also of note from the Board’s decision was its quick dispatch of Patent Owner’s argument that one of the primary references should be ignored because it was considered during prosecution of the ‘058 patent.  The Board gave that fact no weight, stating that “we decline to reject the petition solely on the ground that a reference…is included on an eight-page list of references on the ‘058 patent reexamination certificate.”  Order at 11.

In the end, the Board granted an IPR trial on a single challenge ground, covering all 5 challenged claims.

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).

42 for 47: Claim Construction Takes Center Stage in Grant of Inter Partes Review Trial No. 42

In a claim construction-centric decision by the PTAB, Oracle was successful in getting all 10 of the challenged claims of an Clouding IP patent into inter partes review trial in a case styled as Oracle Corp. v. Clouding IP, LLC Inc. (IPR2013-00073), involving U.S. Pat. No. 6,738,799. The ’799 patent relates to a method of synchronizing files using a signature list. More specifically, the ‘799 patent discloses a method for synchronizing local copies of files on a given set of computers with current versions of the files on a network drive.

The Board began with a claim construction analysis that covered several claim terms in dispute. First, in what turned out to be the only instance of the Board adopting Patent Owner’s interpretation, the Board resolved the differences between the parties’ proposed interpretations of the term “signature list.” The Board declined to adopt Patent Challenger’s narrow interpretation in favor of Patent Owner’s construction, finding that the specification did not require the more narrow definition provided by Patent Challenger.

Several other phrases were also evaluated by the Board, the group consisting of “update,” “command to copy,” and “command to insert,” among others. With respect to all these terms, the Board declined to adopt Patent Owner’s narrow interpretations, relying at times on dictionary definitions (Order at 10), the doctrine that it is improper to import limitations from the specification into the claims (Order at 10, 15), pointing to claim language to assist in the interpretation (Order at 11), and considering the preambles of the challenged claims (Order at 16).

The Board then analyzed Patent Challenger’s seven grounds of unpatentability. Patent Challenger alleged four obviousness grounds and three anticipation grounds. Three of the four obviousness challenges were found by the Board to meet the reasonable likelihood standard, with the last one being denied as redundant. Further, in relying upon Patent Challenger’s expert testimony, the Board found that the challenged claims were anticipated by two of the three different combinations of references, with the final one being denied as redundant.

It is worth noting that the Board again discounted the fact that one of the challenged grounds was already considered in the original prosecution of the underlying patent.  The Board has, invariably, provided little deference to prior Patent Office actions.  Order at 22-23.

In the end, the Board granted trial for all challenged claims based on multiple anticipation grounds as well as grounds of obviousness over several combinations of references.

41 for 46: Two IPR Trials Initiated After Detailed Obviousness Analysis by Board

iStock_000000202778XSmallChimei Innolux Corporation (CMI), an early veteran of inter partes review proceedings, had two more petitions for granted. CMI was challenging two Semiconductor Energy Laboratory (SEL) patents in cases styled as Chimei Innolux Corp. v. Semiconductor Energy Lab. Co., Ltd. (IPR2013-00066 and IPR2013-00068), involving U.S. Pat. Nos. 7,876,413 and 8,068,204.  The IPR trials were granted based on all challenged claims of the subject patents.

The ‘413 and ‘204 patents relate to liquid-crystal display (LCD) devices with two opposing substrates bonded to each other with a sealant. More precisely, the two patents disclose a solution to the problem of non-uniform seals which create an uneven gap between the substrates and can lead to deterioration of picture quality. The patents also describe connecting two conducting lines in parallel through the insulating film of the device along with an adjustment layer.

At the outset of both decisions, the Board addressed Patent Challenger’s request that the Board intercede in Patent Owner’s pending patent application and take immediate jurisdiction over all related applications.  Order at 6.  Treating the request as a motion, the Board denied Patent Challenger’s request.  Simply, Patent Challenger did not show that the claims in the pending application were patentably indistinct from the claims at issue in the IPR and, as such, Patent Challenger had failed to show why the Board should intercede.  Id. 

Next, the Board rejected Patent Owner’s argument that inter partes review petitions were improper pursuant to 35 USC §325(d) because the prior art references were already considered during the prosecution of the applications leading to each patent. The Board stated that without demonstrating that substantially the same arguments were made both times, the inter partes review would not be improper. Next, the Board in each case evaluated Patent Owner’s contention that the review should be denied because the petition failed to identify all real parties-in-interest. SEL asserted that several other co-defendants with Patent Challenger in a pending case all agreed to be bound by inter partes review, but the petition failed to identify them as real parties-in-interest. Because the Board did not find that SEL presented any persuasive evidence that these additional parties had any control over the IPR proceeding, it denied SEL’s contention.  More specifically, the Board might have been persuaded by evidence that the third parties authored the Petition, exerted control over its contents, provided funding for the Petition, etc.  CMI I Order at 9.

Having dispensed with SEL’s procedural challenges, the Board continued with a claim construction analysis, centering on the phrase, “contact through an opening,” and more specifically the definition of, “through.” SEL argued that the phrase meant, “made possible by (or by virtue of) the opening.” CMI did not submit its own interpretation, and the Board found SEL’s interpretation of the phrase to be consistent with the ordinary meaning of the phrase, in light of dictionary definitions of the term, “through.” (The American Heritage Dictionary of the English Language).

The Board then moved on to analyze Patent Challenger’s asserted grounds of unpatentability. In each case, Patent Challenger asserted all challenged claims were unpatentable as being obvious over two combinations of prior art references. Using an expert declaration from Patent challenger, the Board proceeded through a fairly straightforward obviousness analysis, concluding that in each case, the challenged claims were obvious over the prior art, with one of the two combinations of references in each case being denied as redundant. As has been previously seen, the Board showed a willingness to grant IPR trial on obviousness grounds using prior art that was already considered during the prosecution of the application that lead to the patent(s) in question.

In summary, the Board granted the petition of Patent Challenger as to all of the challenged claims in the ‘413 and ‘204 patent on obviousness grounds.

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.