“Catch-All” Phrases Insufficient To Give Proper Notice of Grounds for Petition

In Emerachem Holdings, LLC v. Volkswagen Group of America, Inc., the Federal Circuit made clear that “catch-all” phrases in a Petition for IPR and/or a Board’s Institution Decision are insufficient to put a patent owner on notice of the specific grounds alleged for unpatentability.

In this case, the Board relied upon the “Stiles” reference as disclosing one of the elements of challenged claims 3, 16 and 20, even though the Petition did not specifically rely upon Stiles for those claims (instead applying Stiles to other challenged claims).  Similarly, the Board’s Institution Decision did not specifically identify Stiles as part of the ground for unpatentability of claims 3, 16 and 20.  Petitioner argued that a broad statement in the Petition that “[c]laims 1-14 and 16-20 are obvious under 35 U.S.C. §103(a) over the combination of Campbell [‘558] and either Hirota or Saito, in view of Stiles” was sufficient to put the Patent Owner on notice.  The Petitioner also argued – as did the PTO, which intervened to defend the Board’s decision – that a similar statement in the Institution Decision was sufficient notice.  The Federal Circuit rejected those arguments, finding that such general statements, particularly in the light of very detailed claim charts that failed to identify Stiles for claims 3, 16 and 20, do not provide sufficient notice.  Therefore, the Patent Owner’s right to notice and an opportunity to respond under the America Invents Act were violated.  The Federal Circuit reversed and remanded.

The Federal Circuit also reaffirmed the need for corroboration when relying upon the testimony of an alleged inventor.  Here, the inventors of the challenged patent each submitted declarations to the effect that they were the sole inventors of the subject matter of an asserted prior art reference on which they were listed inventors along with two other inventors.  Therefore, argued the Patent Owner, the alleged prior art did not qualify under 35 U.S.C. §102(e) because it was not “by another.”  The inventors’ declarations, though, were uncorroborated by any other testimony or documents.  The Federal Circuit reaffirmed that, in many cases, the testimony of an inventor must be corroborated, and that the sufficiency of the corroboration will be determined under the totality of the circumstances.

PTAB Rejects Two Attempts by Patent Owners to Antedate Prior Art

6686163_sThe fact-based nature of conception/reduction to practice issues makes it worthwhile to consider a number of these types of cases as they arise. Here, we discuss such issues from two Board decisions, K-40 Electronics, LLC v. Escort, Inc., IPR2013-00240 and Handi Quilter, Inc. and Tacony Corporation v. Bernina International AG, IPR2013-00364. In both cases, the Board rejected Patent Owner’s attempt to antedate the prior art-at-issue.

The K-40 Electronics case involves US Pat. No. 6,670,905, relating to a radar detector and a location positioning device.  Decision at 3. Patent Owner relied upon declaration testimony from the inventor of the ‘905 patent, which stated that the claims at issue were conceived and reduced to practice prior to the effective art dates of two references relied upon by Petitioner. Of course, to establish reduction to practice, a party must show: (1) construction of an embodiment that meets all claim limitations; (2) determine that the invention would work for the intended purpose; and (3) sufficient evidence to corroborate inventor testimony as to the events.  ‘240 Decision at 11.

The inventor testimony stated that a 1992 prototype of the ‘905 invention was constructed prior to the priority date of the references-at-issue. and used a tape recorder to record geographical location of a radar signal. The inventor alleged that this feature met the claimed limitation of a “position determining circuit.” The Board rejected this contention, citing back to its claim construction determination, finding that a tape recorder did not determine geographic position; rather, a tape recorder was only an electronic notepad to record observations of the invention. Id. at 12-13.  Accordingly, the prototype did not reduce all claim limitations to practice.

Inventor also testified that a different 1996 prototype also had a “position determining circuit” in which software code was drafted to demonstrate global positioning capability.  The inventor was forced to concede, however, that the software did not disclose a position determining circuit. The inventor testified that some of the lines of software were missing and Patent Owner could not find any version of the software that contained the missing code.

This hole in the evidence presented by Patent Owner exposed a critical flaw in its objective evidence corroborating reduction to practice; namely, Patent Owner was using the software to corroborate expert testimony, but simultaneously had to use expert testimony to corroborate missing features of the software. Id. at 14-15. The Board also found several statements by the Inventor regarding claimed features of the invention allegedly being reduced to practice to generally lack adequate evidentiary corroboration. Id. at 15.  Accordingly, with a general lack of evidence, Patent Owner in IPR2013-00240 failed to prove conception and reduction to practice prior to the art date of two references relied upon by Petitioner.  Id. at 17.

The Handi-Quilter case involves US Pat. No. 6,883,446, which relates to a method and apparatus for stitching together fabric layers. ‘364 Decision at 12. Patent Owner generally failed to prove conception of several features of the ‘446 invention.  Specifically, Patent Owner did not provide evidence that the inventor had conceived of the limitation, that required controlling the stitch head or needle arm so that it actuates in response to detected movement, prior to the priority date of the art at issue.  Id. at 12.  In fact, the inventor admitted on the record that he had not decided on a control circuit for the prototype until after the art date of the reference at issue.

Further, the Board questioned the reliability of the evidence presented to establish conception and reduction to practice.  The evidence presented was a hand-written sketch of the invention with a date well before that of the reference at issue. Though the hand-written document had a date printed on it, the record showed no corroboration beyond the inventor’s sworn statement that this date was in fact the date the document was created or last-modified.  Id. at 13.  In fact, the document was not seen by anyone besides the inventor until seven years after the date written on the paper.  Further, other testimony attempting to corroborate the inventor’s sworn statement of conception was found to be either unreliable or consisting of bare legal conclusions, not underlying facts. Id. at 14-15. Lastly, demonstrations of the invention by the inventor as detailed by the inventor’s wife weren’t persuasive because the inventor’s wife either did not actually witness the demonstration or the demonstration was only of part of the invention, not all claimed features.  Unsworn statements by the inventor’s sons also weren’t given weight because they weren’t sufficiently independent from the inventor. Id. at 16. Accordingly, the Board found that Patent Owner had failed to prove conception and reduction to practice in attempting to antedate a prior art reference.

Copyright Notice on Prior Art Establishes Priority Date in IPR

12111095_sThe PTAB weighed in on whether a copyright notice can be sufficient to demonstrate the priority date of a printed publication in FLIR Systems, Inc. v. Leak Surveys, Inc., IPR2014-00411, -434, -608, and -609.  In Flir, Petitioner relied in the petition upon a brochure that contained a copyright notice of 2002. Patent Owner argued that the printed publication was an “undated reference.” Order at 18. Given that the document contained the Copyright notice, however, the Board was persuaded that Petitioner had established a priority date of 2002, and allowed the document as prior art. Id. at 19.

Interestingly, the Board also considered another printed publication, a user guide, that failed to contain a publication date or copyright notice. The Board cited, however, to the testimony of a witness who stated that the user guide was distributed with a related product before the priority date of the subject patent. Further, the witness testified that the product and user guide was publicly available prior to the priority date of the patent-at-issue. Is this not an end-around the printed publication requirement by using a prior use to corroborate the publication? That is what a different PTAB panel found HERE when it decided that an undated document was not prior art because it contained no publication date and that panel decided that any testimony from a witness about a prior use of the underlying product disqualified the art as a prior use, not a printed publication.

Corroborating Evidence Insufficient in Final Written Decision Canceling All Claims

iStock_000028428166_SmallOne of the more fact-dependent inquiries in patent disputes is the issue of conception and reduction to practice.  This issue was raised in an inter partes review setting in CBS Interactive Inc. v. Helferich Patent Licensing, LLC, IPR2013-00033, Paper 122 (Final Written Decision), wherein Patent Owner sought to swear behind cited prior art by filing a declaration from the inventor and a handwritten specification claimed to have been written before the critical date. Id. 44.

The art at issue was 35 U.S.C. § 102(e) art — filed “before the invention by the applicant for patent.”  In the inventor’s declaration, he testified that he conceived the subject matter of each challenged claim prior to the filing date of the prior art.  As corroborating proof of this earlier invention, the inventor cited to an undated, handwritten specification allegedly describing the claimed invention. The inventor testified that he completed the handwritten specification prior to the critical date.  Id. at 45.

Of course, an inventor’s testimony, standing alone, is insufficient to prove conception — some form of corroboration is required.  In re NTP, Inc. 654 F.3d 1279, 1291 (Fed. Cir. 2011). Id. at 45. The Board determined that the undated, handwritten specification did not qualify as corroborating evidence because it was undated and unsigned. The inventor’s testimony, that he prepared and completed the specification prior to the critical date, was deemed insufficient to corroborate the date of the specification.  Further, an inventor’s own testimony is not “independent” corroboration of proof that comes from the inventor himself.  Id. at 47.  Failing to swear behind the critical prior art, the Board ultimately determined that all challenged claims were unpatentable.

Petitioners Strike First: PTAB Issues First Final Decision – Claims Unpatentable and Motion to Amend Denied

Business Finish LineWe finally made it!  Almost 16 months after Garmin kicked off this fun IPR roller coaster we have been riding, the PTAB has issued its first Final Written Decision, finding that all three claims-at-issue in the IPR trial styled as Garmin Int’l, et al., v. Cuozzo Speed Tech. LLC, IPR2012-00001 (Paper 59), involving U.S. Patent No. 6,778,074, are unpatentable and that Patent Owner’s motion to amend is denied.

By way of brief procedural history, Petitioner initially sought an IPR trial on 20 claims of the ‘074 patent.  In its decision to institute the trial, however, the Board found that there was a reasonable likelihood of unpatentability with respect to 3 of the 20 challenged claims.  Of course, as the trial progressed, this case gave us the now ubiquitous Garmin factors for proving the required “good cause” to obtain additional discovery.

Turning to the actual decision, we note that the details of the technology involved, and other aspects of the ‘074 patent, were set forth in the Decision to Initiate.  As such, we focus here on what struck us as the most interesting aspects of the Board’s Final Written Decision:

  • In general, the Board’s extensive 50-page decision is detailed, well-sourced, and unambiguous.  The Board refers often to relevant Federal Circuit case law and to the record (such as deposition testimony, briefing, and oral hearing argument) as part of a methodical treatment of all the defenses raised by Patent Owner.
  • The meaning of the term “integrally attached” was a key component of both the Decision to Initiate and the Final Written Decision.  The Board did not change its definition from its initial decision to the final decision, despite Patent Owner’s strong opposition thereto (including at oral argument).
  • While ostensibly working under the “broadest reasonable interpretation” claim construction standard, the Board’s analysis mimics that engaged by a federal court – relying on the intrinsic evidence of the ‘074 patent.  There is nothing discernible from the decision that would indicate how a district court would have come to a different claim construction analysis than that adopted by the Board, despite the ostensibly different standards.
  • In coming to its claim construction decision, the Board discounted the expert testimony provided by Patent Owner because that testimony, regarding what one of skill would have known, was vague.  The Board could not discern “just how much is deemed to be described by the disclosure itself, and how much is filled-in or completed by one with ordinary skill in the art, who possesses ordinary creativity and is not an automaton.”  Order at 14. Further, “[w]hat would have been obvious to one with ordinary skill in the art does not establish what actually is described in the specification.”  Id.  This is an ongoing theme with the Board in their consideration of expert testimony – mere allegations that mimic attorney argument are not enough, even if coming through the mouth of an expert. The Board is requiring a detailed and factual basis for the opinions of these experts.
  • Patent Owner sought to constrain the Board’s construction of “integrally attached” by referring to a district court case that construed “integrally connected.”  The Board explained why the terms were different, in the context of this IPR, but also more broadly suggested that comparison of two terms from different proceedings will not be given much weight in the future.  To that end, the Board pointed out that the patents had different disclosures; the field of invention is not the same; the level of ordinary skill in the art was different; the context in which the terms were used in the claims was not discussed by Patent Owner; and, of course, the terms “connected” and “attached” are different.  Order at 16-17.
  • The Board engaged in an extensive discussion relating to the priority date of the invention, including evidence of earlier conception and reduction to practice.  Among that evidence included a denial of Patent Owner’s use of a speeding ticket as corroborating evidence: “Exhibit 3001 corroborates only that the inventor received a speeding ticket on November 28, 1999, not anything that [inventor] conceived on that day.”  Order at 21.  As to other purported corroborating evidence, Patent Owner did not offer the testimony of a witness who purportedly signed the document and did not properly establish the document as a business record.  Order at 23.
  • The Board went on to discuss the inventor’s reasonable diligence in reducing his invention to practice, finding inadequate justification for two periods of “little activity” – one period spanning 2 months, and the other spanning 5 months.  Order at 25.  As a cautionary note, the Board found that Patent Owner’s excuse for the delay – a difficulty in obtaining money to file for patent protection – may have been satisfactory.  In this case, however, the delay was deemed too long because Patent Owner did not adequately explain such difficulties in obtaining the required money.  Order at 27.  Again, the lack of a factual basis for a position.
  • The Board’s ultimate comparison of the properly construed claims to the prior art was similar to the analysis from its Decision to Institute.  Ultimately, having decided the “integrally attached” claim construction issue, the art disclosed each element of the challenged claims and the Board did not accept Patent Owner’s teaching away arguments.
  • Lastly, the Motion to Amend Claims was denied by the Board because the amended claims did not have adequate support in the specification.  Failing the written description requirement of 35 USC § 112, ¶1, the motion was denied.

In the end, the Board’s first Final Written Decision contains few surprises.  As has been the case in their decisions to institute, and other ancillary decisions, the Board undertook a thorough job of examining the merits, took unambiguous positions on those merits, and rendered a decision that is comprehensive and detailed.  Next stop on this IPR ride: the Federal Circuit.