IPR Patent Owner Succeeds in Antedating Key Prior Art

4928629_sA witness credibility battle erupted in Dynamic Drinkware LLC v. National Graphics, Inc., IPR2013-00131, where the Board found that Patent Owner antedated a key prior art reference…despite the fact that the inventor testified on behalf of Petitioner. To uphold its burden of proving an earlier invention, Patent Owner relied on testimony from two fact witnesses who explained the steps undertaken by Patent Owner in conceiving and reducing to practice the claimed invention. Order at 7. In rebuttal, Petitioner relied on testimony from the inventor himself. Id. The inventor testified that while working for Patent Owner and developing the product, “None of the products [were produced]…in a way that was consistent with the claims of the ‘196 patent.” Id. at 10. The inventor further testified his notebook entry “confirms that we still had a long way to go [for commercialization].”

The Board sided with Patent Owner, finding that “[t]here is no requirement that the invention, when tested, be in a commercially satisfactory stage of development.” Steinberg v. Seitz, 517 F.2d 1359, 1363 (Fed. Cir. 1975) “The fact that further refinements of the invention were made is not relevant.” Farrand Optical Co. v. United States, 325 F.2d 328, 333 (2d Cir.1963). Order at 13.

Thus, the testimony from the inventor himself did not persuade the Board that the invention was not reduced to practice prior to the critical date of a key prior art reference. Id. at 17. The Board found Patent Owner’s witnesses properly antedated the reference and, without that prior art, the proposed challenge grounds from the Petition failed.

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.

Later Priority Date for IPR-Challenged Patent Where No Written Description in Parent

4177464_sThe Board denied an interesting attack from Patent Owner who suggested that Petitioner’s argument, that the patent-at-issue was not entitled to the priority date of its parent, was barred in inter partes review proceedings because it is based on 35 U.S.C. § 112. SAP America, Inc. v. Pi-Net International, Inc. IPR2014-00414, involving US Patent No. 8,346,894; and parent patent, US Patent No. 8,037,158.

Petitioner argued that the subject matter of the challenged claims of the ‘894 patent were not disclosed in the parent ‘158 patent in a manner sufficient to meet the requirements of 35 USC §112, first paragraph. Order at 11. As such, per Petitioner, the ‘894 claims were not entitled to the priority date of the ‘158 parent patent.  Specifically, Patent Challenger argued that negative limitations in some of the ‘894 claims were not disclosed in the ‘158 parent specification. Id.

Patent Owner’s Preliminary Response argued that the petition exceeded the scope of inter partes review (which allows only challenges under 35 USC §102 and §103) by including an analysis under §112 in the challenge.

The Board began its analysis by noting that there is a difference between arguing that a claim is unpatentable based on §112 inadequate written description grounds and arguing that a claim is not entitled to a given priority date based on §112 grounds.  Further, Patent Owner provided no arguments on the merits against Petitioner’s assertions of lack of written description in the parent ‘158 patent.  Accordingly, after dismissing inapplicable case law cited by Patent Owner because of this distinction, the Board agreed with Petitioner and found that the ‘894 challenged claims were not entitled to the priority date of the ‘158 patent because the ‘158 patent did not provide an adequate written description of the challenged claims.

Board Considers Proof of Diligent Reduction to Practice

22397198_sPatent Owner’s attempt to disqualify prior art in an inter partes review failed because it could not show diligence from conception to reduction to practice in Medtronic, Inc., et al. v. Troy R. Norred, M.D., IPR2014-00395, U.S. Patent No. 6,482,228.

Patent Owner’s preliminary response sought to remove one of the allegedly-anticipatory references as prior art by providing evidence of conception prior to the effective filing date of the reference and diligence to reduction to practice (the filing of the patent application, in this instance). To remove a reference with an art-date during 1999, Patent Owner argued that the claims at issue of the ‘228 patent were conceived in late 1998 and there was reasonable diligence until reduction to practice. To support the argument, Patent Owner submitted documentary evidence and exhibits to the Board.

The Board was not persuaded, however, finding that the exhibits were not sufficiently linked to each claim limitation to prove reasonable diligence during the period between conception and filing of the patent application. The Board specifically pointed out that though some exhibits pertained to drawings present in the ‘228 patent, those drawings were not relied upon to illustrate claimed features of the invention. Further, the evidence presented did not show several claimed features of the ‘228 invention, including a “tissue valve.” Therefore, reasonable diligence was not proven for all claimed features and the reference at issue was deemed to be prior art.

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.

131 Declaration That Was Successful in Prosecution Deemed Insufficient in Inter Partes Review

iStock_000019749872SmallThe Board proved willing to overturn a previous patent examiner’s judgment in another type of issue in Iron Dome LLC v. E-Watch, Inc., IPR2014-00439, where, in instituting an inter partes review trial, the Board found that Patent Owner did not properly swear behind a prior art reference, despite the fact that, during earlier prosecution, the Patent Office found that the prior art was properly antedated.

The prior art at issue had an effective filing date of April 25, 1995 qualifying it as prior art under 35 U.S.C. §§ 102(a) and 102(e) because it was not issued or published more than one year prior to the effective filing date as the ‘871 patent, but the effective filing date was earlier than the effective filing date of the ‘871 patent. Id.

During the original prosecution of the patent-at-issue, the Examiner found that the inventor’s submitted declaration sufficiently antedated the prior art reference. Id at 6. The Board took a fresh look at the declaration in the inter partes review, however, and disagreed with the Examiner’s earlier determination. Id at 8. As such, the prior art was relevant in the IPR and the Board determined that there was a reasonable likelihood that the challenged claims were unpatentable in view of that art.

Patent Owner will, of course, have another opportunity with its Patent Owner Response to seek to antedate the prior art at issue, but in the meantime, this is another example of the Board’s willingness to reconsider issues that were purportedly decided during previous examination or reexamination.

Dell Ends Up With a Mixed Bag of Results in 2 IPR Petitions Filed Against Acceleron

Silver Servers Rack - Hosting ThemeIn two separate challenges of a single patent, Dell had lukewarm success with 23 claims being placed in an inter partes review trial, but three claims and multiple grounds also denied by the Board in Dell, Inc. v. Acceleron, LLC (IPR2013-00440 and IPR2013-00443), involving U.S. Pat. No. 6,948,021.

The ‘021 patent relates to a computer network device having components of CPU modules, a power module, and an Ethernet switch module which incorporates “hot-swappable” connectors. The hot-swappable connectors allow for more efficient and speedy repair of the device.

The first issue of interest in the Board’s decision came as part of the claim construction for “is a stand-alone computer.”  Petitioner sought to broaden the scope of that term, based on a claim differentiation argument, but the Board found no reason to deviate from the plain and ordinary meaning of the term.  ‘440 Order at 6.

Also of interest was Petitioner’s inherency argument relating to the limitation of claim 24 that required a limitation relating to filtering communications to limit collisions caused by communications traffic.  Petitioner argued that such filtering was inherent to Ethernet switches, and supplied a declaration that “simply reiterates this position.”  ‘440 Order at 12.  But the Board was not persuaded by this inherency argument.  The patent at issue teaches that ethernet switch modules perform the claimed filtering, not simply a switch.  Because Petitioner did not allege that a switch was the same as a switch module, the Petition failed to set forth a reasonable likelihood of anticipation of claim 24.

Of brief note from the Board’s obviousness analysis, in what is a growing trend, the Board made special mention of the fact that Petitioner articulated a reason for combining the references underlying its obviousness contentions.  That is, not only did Petitioner demonstrate that the combination met all limitations, it also “articulated a sufficient reason with a rational underpinning for combining the teachings…”  ‘440 Order at 15.

In sum, in the ‘440 proceeding, the Board found that 23 of the 26 challenged claims should be placed into an IPR trial.

Turning to the ‘443 proceeding, Patent Owner’s most critical arguments centered on the priority date for certain claims of the ‘021 patent.  To that end, Petitioner argued that certain claims were not entitled to the filing date of a related provisional application.  ‘443 Order at 7.  In its Preliminary Response, Patent Owner set forth the support from the provisional application for the challenged claims and the Board agreed – finding that the claims were properly supported and were, therefore, entitled to the provisional application filing date.

This finding had a ripple effect on the prior art relied upon by Petitioner.  For example, the Board then turned to a prior art reference, that similarly claimed priority to provisional applications.  Patent Owner argued that the reference was not entitled to the priority date of the provisional applications because the excerpts relied upon by Petitioner were not found in the provisional applications.  The Board agreed, finding it important that neither Petitioner, nor its expert, cited to the provisional applications.  Further, Petitioner did not even provide copies of the applications as exhibits.  ‘443 Order at 10.

In the end, Dell’s efforts resulted in a mixed bag – partial success in having 23 of 26 challenged claims entered into an IPR trial based on one petition, but all challenges rejected in the second petition.

Burden is on Petitioner to Prove Priority Date of Patent Challenged in Inter Partes Review

michael_at_ispSucceeding on a lone ground of unpatentability, Hewlett-Packard was able to get all 4 challenged claims of an MCM patent into a trial for inter partes review in a case styled as Hewlett-Packard Co. v. MCM Portfolio, LLC (IPR2013-00217), involving U.S. Pat. No. 7,162,549.

The ‘549 patent relates to controllers for flash memory cards.  More specifically, the ‘549 patent describes a “flash-memory card reader that accepts flash-memory cards of several different formats using a universal adapter.”

After a brief claim construction analysis, the Board discussed privity under 35 USC § 315(b).  In general, because Petitioner resells products that were accused of infringement in an action served well over a year prior to the filing of the petition in this IPR proceeding, Patent Owner argued that § 315(b) barred the IPR filing.  The Board held that this was not sufficient evidence to prove privity.  For example, Patent Owner provided no persuasive evidence that Petitioner could have exercised control over the alleged privy in related district court litigation.  Just because Petitioner and the alleged privy are successive owners of the same allegedly infringing property is not enough to prove privity.

An additional, procedural ground addressed by the Board was the priority date of the ‘549 patent given that it claims the benefit of a provisional application and is a continuation-in-part of four non-provisional applications.  The Board criticized Petitioner for failing to provide sufficient evidence to support its argument that the ‘549 patent was not entitled to the filing date of an early application, as argued by Patent Owner.  To that end, none of the applications to which the ‘549 patent claims benefit were entered into the record in this case.  Further, testimony from Petitioner’s expert was conclusory and incomplete.  Order at 8-10.  Thus, the Board found that Petitioner’s arguments regarding the later priority date were insufficient and numerous references upon which Petitioner relied were removed from the proceeding.

Petitioner was saved by the fact that its last remaining ground for unpatentability was deemed persuasive by the Board.  As such, Petitioner was able to get 4 challenged claims of the ‘549 patent into a trial for inter partes review.

Board Gives No Weight to Previous Examiner and District Court Decisions that Prior Art Was Antedated

iStock_000003288988XSmallThe Board continued its record of taking a fresh look at old records in placing 10 challenged claims of an Escort patent into a trial for inter partes review in a case styled as K-40 Electronics v. Escort, Inc. (IPR2013-00203), involving U.S. Pat. No. 7,999,721.

The ‘721 patent relates to a GPS-enabled radar detector. More specifically, the patent describes that the detector is “designed to process dynamically radar sources based on previously-stored geographically referenced information.”

The Board’s decision was notable for its analysis of prior art cited by Petitioner that Patent Owner had overcome in both the examination of the application that matured into the ‘721 patent and in related district court litigation.

More specifically, during prosecution of the ‘721 patent, inventor submitted a Rule 131 Declaration seeking to antedate one of the prior art references.  The Examiner found the declaration to be sufficient, and withdrew rejections based on that prior art.  The Board, however, changed course and sided with Petitioner in deciding that the declaration that was submitted was deficient.  Order at 6.

Relatedly, Patent Owner directed the Board to district court litigation in which Patent Owner successfully argued to the Board that the invention of the ‘721 patent was reduced to practice before the effective date of relevant prior art.  The Board was not persuaded by this information because the district court decision was not final and because the litigation did not involve Petitioner, so Petitioner was not bound by the result.  Order at 14.

Relatedly, the Board also refused to deny the petition, under 35 USC § 325(d), because the same art and arguments were previously considered.  As the Board has found in every other instance in which this provision has been raised, it deemed the record in the inter partes review to be different, such that the statutory option of § 325(d) was not applicable.

In short, Patent Owner’s arguments that the petition should be denied in view of the previously-considered art were denied in their entirety and, ultimately, an inter partes review trial was instituted with regard to all challenged claims.

Copyright Notice without Day and Month Insufficient to Establish Reference as Prior Art

In Dash Reversing camera (LHD)In a concise decision, iOnRoad was able to get three challenged claims of a Mobileye Technologies patent into a trial for inter partes review in a case styled as iOnRoad, Ltd. v. Mobileye Techs., Ltd. (IPR2013-00227), involving U.S. Pat. No. 6,704,621.

The ‘621 patent relates to “estimating ego-motion (i.e., self-motion) of a moving vehicle, which is an important component in autonomous driving and computer vision-based driving assistance. Further, the ‘621 patent discloses the use of information obtained from successive images of an on-board camera along with other information, such as the vehicle’s speed, to determine the ego-motion of the vehicle.

Despite the fact that the Board did not adopt the two proposed claim construction positions from Petitioner, the Board went on to find that several grounds for anticipation and/or obviousness met the reasonable likelihood standard.  In general, this was a straightforward analysis that does not bear repeating here.

Interesting in this analysis, though, was one of the prior art references, which contained a copyright date of 1999 – but without the day or month.  Because the earliest priority date of the ‘621 patent was November 26, 1999, Petitioner failed to demonstrate that the prior art was definitively published prior to the critical date.  Order at 15-16.

Other than this snippet relating to the eligibility of a prior art reference, the Board’s decision is concise and without major issue.  All three challenged claims were placed into the IPR trial by the Board.