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.

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.

Expert Opinion on Claim Construction Must Include Evidence to be Given Weight by PTAB

Optical fibersCorning was successful in challenging 22 claims of a DSM IP Assets (DSM) patent in a case styled as Corning Incorporated v. DSM IP Assets B.V. (IPR2013-00053), involving U.S. Pat. No. 7,276,543.  The ‘543 patent relates to radiation curable coating compositions for optical fibers. More specifically, the patent describes optical glass fibers with two radiation-cured coatings which exhibit improved cure speed without increased sensitivity to yellowing over time.

In performing its claim construction analysis, the Board agreed with Patent Owner that only one of the submitted terms needed to be interpreted outside their normal meaning.  Accordingly, the Board set forth a detailed explanation of the lone claim term in dispute, “absorption maxima,” in which it found Patent Challenger’s construction overly broad. Central to the Board’s decision in this regard was the fact that Patent Challenger’s expert declaration, that purported to support Patent Challenger’s interpretation, did “nothing more than state the conclusion that ‘[a] skilled scientist would have recognized’ Patent Challenger’s construction was acceptable.  Order at 5.  The Board went on to instruct that a proper foundation for such an expert opinion on claim construction would include evidence upon which the expert based such a conclusion, or other objective evidence supporting the construction.  In the end, the Board seemed to give no weight to the conclusory declaration offered by Patent Challenger in this respect.  As such, the Board agreed with Patent Owner’s interpretation of an absorption maxima, citing the specification of the ‘543 patent which states that it “will be understood that λmax is a point on the curve wherein the tangent to the curve is parallel with the horizontal axis.”

Also interesting from the Board’s decision was its analysis of whether one of the prior art references cited by Patent Challenger did, in fact, qualify as prior art.  Patent Owner argued that the reference did not qualify because, at the time the invention was made, the prior art patent was commonly owned with the patent-at-issue.  The Board rejected Patent Owner’s argument because Patent Owner had not shown sufficiently that the two patents were commonly owned “at the time of the invention.”  Order at 10.  For example, the evidence cited by Patent Owner was dated after the filing of the application that became the ‘543 patent.  The Board did, however, note that, during the trial portion of the proceeding, Patent Owner would have the opportunity to provide additional evidence concerning ownership (including, presumably, testimony on the point).

The remainder of the Board’s opinion follows the format of earlier decisions on petitions brought by Corning that rely heavily on the inherent disclosure of prior art references.  Earlier posts related to those decisions can be found HERE and HERE.

Board’s Claim Construction Limited to What it Needed To Initiate IPR Trial

In an interesting decision, the Board limited its claim construction analysis to whether a compound found in the prior art was covered by the claims, as opposed to coming to a determination of what were the full metes and bounds of the claim limitation’s meaning, in instituting an inter partes review in St. Jude Medical, Cardiology Division, Inc. v. The Board of Regents of the Univ. of Michigan (IPR2013-00041), involving U.S. Pat. No. 5,746,775.  All six challenged claims were put into the trial and the University did not file a preliminary patent owner response.

The ‘775 patent relates to methods of exposing biomaterial for implantation in a living being to an alcohol to inhibit in vivo calcification. More precisely, the invention relates to contacting the biomaterial with a greater than 50% by volume solution of an alcohol for a period of time sufficient to render the tissue resistant to in vivo calcification. The solution may optionally contain additional anti-calcification agents, such as a soluble salt of a metallic cation like Al+3 or Fe+3.

In a practical claim construction ruling, the Board determined that the claim limitation “C1-C3 aliphatic alcohol” covered glycerol, because that is the alcohol that is disclosed in the prior art at issue.  In coming to its decision, the Board looked to dictionary definition of “alcohol,” as well as the specification of the ‘775 patent.

The Board followed the brief claim construction analysis by determining the effective filing date of the ‘775 patent to determine the whether a reference cited by Patent Challenger qualified as prior art. Patent Challenger argued that the ‘775 patent, a continuation-in-part, was not entitled to its ancestor’s filing date because the earlier-filed application did not provide adequate written description support for the limitations in the challenged claims. The Board agreed with Patent Challenger inadequate support was provided in the ancestor patent documents to the ‘775 patent for at least two limitations of the subject claims.  As such, the ‘775 patent was entitled to only its own filing date as a priority date, thereby qualifying the reference in question as prior art.

In view of these findings, the Board had the ammunition it needed to grant Patent Challenger’s Petition for inter partes review as to all 6 challenged claims in the ‘775 patent based on obviousness grounds.

43 for 48: First Design Patent Placed Into Inter Partes Review Trial

iStock_000011216568XSmallMunchkin, Inc. and Toys “R” Us were successful in challenging a Luv N’ Care, Ltd. design patent in a case styled as Munchkin, Inc. and Toys “R” Us, Inc. v. Luv N’ Care, Ltd. (IPR2013-00072), involving U.S. Pat. No. D617,465. The ‘465 patent, entitled “Drinking Cup,” described an ornamental design for a drinking cup having a vessel, collar, and spout.

The Board began by evaluating the prior art relied upon by Patent Challengers in their challenge of the claim in the ‘465 patent. Two grounds for challenge were based on obviousness in light of a single reference.  From there, however, Patent Challengers raised numerous additional multi-reference grounds classified into seven categories, with each category proposing a principal reference in view of several additional references. Since this resulted in the proposed grounds numbering in the hundreds or thousands, the Board noted that Patent Challenger was not entitled to have all such grounds considered, but the Board did address the grounds in a general manner.

The first issue the Board had to face was the proper priority date for the ‘465 patent.  Because a continuation application must comply with the written description requirement to be entitled to a parent’s effective filing date, the Board pointed out that, when an issue of priority arises “in the context of design patent prosecution, one looks to the drawings of the earlier application for disclosure of the subject matter claimed in the later application.”  Order at 6-7.  To this end, the Board agreed with Patent Challenger that the parent disclosure did not provide written description support for the claim of the ‘465 patent.

After establishing priority dates relevant to the ‘465 design, the Board began a claim construction analysis. The Board construed the claim to be for the ornamental design of the drinking cup and proceeded to give verbal descriptions of the features of the design seen in the drawings; specifically, a vessel, collar, and spout. Further, the Board rejected the Patent Challengers’ argument that the vessel and collar do not form part of the claim because they are functional. The Board based this decision on the fact that Patent Challengers did not persuade them that the vessel and collar were purely functional and not also ornamental. Order at 12-13.

Next, the Board began its analysis of Patent Challengers’ asserted grounds of unpatentability. The design of the drinking cup of the ‘465 patent was shown to be similar enough to the design of a drinking cup described by two separate single references that “in the eye of an ordinary observer, the designs are substantially the same, such that they would deceive the observer.”  Order at 14.  Accordingly, the Board held that the there was a reasonable likelihood that the ‘465 patent claim was obvious over the two cited references and granted the Petition. To complete the record, the Board then generally considered the hundreds of additional obviousness grounds, finding that the designs in those references were substantially different from those of the ’465 patent and, denying the additional grounds.

In the end, design patents are not immune from the pro-Patent Challenger wave that has characterized the first months of IPR practice.

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.