Board Disagrees with Claim Construction of Prior Proceeding Before the PTO

22227585_sOne of the more disheartening trends to Patent Owners in inter partes review proceedings is the strong willingness of the PTAB to give little or no deference to prior Patent Office proceedings relative to the patent-at-issue. This creates considerable uncertainty relative to these important assets. This issue arose again in Toshiba Corp. v. Intellectual VenturesIPR2014-00317, US Patent No. 5,687,132, wherein the PTAB disagreed with a claim construction adopted in an earlier reexamination proceeding. The ‘132 patent relates to multiple-bank computer memories.

In the prior reexamination proceeding, the Examiner found that the claims at issue each included a requirement for a single memory, as opposed to two separate memories. Importantly, this feature was not found in the prior art and, thus, Patent Owner argued that the IPR Petition should be denied.

Pursuant to 35 U.S.C. § 325(d), in deciding whether to institute inter partes review, 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.”  Under this provision, the Board was within its authority to deny the Petition based on the Examiner’s reasoning in the reexam.  However, the Board opted not to take this route, as it disagreed with the Examiner’s claim construction.

At issue was the claim term “a memory.”  As mentioned, the Examiner found that “a memory” required there be a single memory, not two separate memories.  The Board, however, disagreed, noting that established precedent holds that articles “a” and “an” are construed to mean “one or more” absent clear intent to limit to “one.”  In the ‘132 patent, Patent Owner showed no clear intent to limit the scope of the claims to only one memory, and further explicitly stated that the invention is not limited to such an embodiment.  Therefore, the Board disagreed with the Examiner in the reexamination and construed “a memory” to mean “one or more memories.”

Because on this construction by the Board, Patent Owner’s arguments against anticipation failed and the Board granted the petition for inter partes review.

Board Allows New Reexamination Filing to Amend Claims at Issue in Concurrent IPR

New startIt is well settled under the AIA that it’s possible to have concurrent proceedings during an IPR.  In Game Show Network, LLC and, Inc. v. John H. Stephenson (IPR2013-00289), the Board addressed a related issue in which Patent Owner was pursuing a concurrent ex parte reexamination during an ongoing IPR proceeding.

Patent Challenger filed a motion to terminate or stay ex parte reexamination of U.S. Pat. No. 6,174,237.  In the reexamination, Patent Owner sought to amend the claims at issue in the instant IPR proceeding.

Patent Challenger had two main arguments in favor of termination.  First, Patent Challenger argued that allowing pursuit of claim amendments in the ex parte reexamination is inconsistent with Congressional intent of the AIA.  Patent Challenger asserted that by pursuing claim amendments in the reexamination rather than in the IPR proceeding, Patent Owner was dodging Congress’s intent to have IPR proceedings be a substitute for litigation in which the parties’ entire patentability dispute could be resolved in a single proceeding.  Patent Challenger also alleged that allowing Patent Owner to amend claims in the concurrent ex parte reexamination would generate inconsistent claim analyses and increase inefficiency, as further litigation and/or more IPR proceedings would result if Patent Owner’s substitute claims were deemed allowable after reexamination.

Secondly, Patent Challenger argued that Patent Owner was only pursuing minor claim amendments and that the proper avenue for doing so was in an IPR proceeding, not in an ex parte reexamination, where major claim amendments are pursued.

Patent Owner argued that it would be greatly prejudiced if the ex parte reexamination was terminated in light of the fact that the deadline to amend claims in the instant IPR had already passed.

The Board agreed with Patent Owner and made three key points:

(1)    Patent Owner was not attempting to thwart Congressional intent.  The AIA has no express language barring ex parte reexamination to amend claims at issue in a concurrent IPR.  Further, it’s clear that the AIA allows the Director to decide if and how concurrent matters proceed during an IPR.

(2)    Board precedent states that strategies outside of IPR are available for amending claims.  Though an ex parte reexamination typically involves major claim amendments, this fact doesn’t restrict any other amendments to claims at issue in an IPR to be made exclusively within said IPR proceeding.

(3)    There is no issue of generating inefficiency, as the Director had not yet acted on Patent Owner’s request for amending claims.

Therefore, the Board ultimately denied Patent Challenger’s motion to terminate the concurrent ex parte reexamination.

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.

Reexamination Stays Remain the Norm in Inter Partes Review Practice

The PTAB continues to favor inter partes review proceedings over reexamination practice, staying the fourth and fifth co-pending reexaminations in view of a pending IPR. That makes the Board five-for-five in staying reexaminations, despite its consistent statement, contained in each order, that “[t]he Board will not ordinarily stay a reexamination because, in the absence of good cause, reexaminations are conducted with special dispatch.”

The background of this conflict between reexamination and inter partes review proceedings has been previously discussed (Click on the “Concurrent Proceeding” Category in the drop down menu at right). It is worth noting these additional decisions, however, to provide for a complete record and to account for all the ammunition at the disposal of any party seeking to stay a reexamination proceeding in view of an inter partes review.

Another Motion to Stay Reexamination Granted in Inter Partes Review

One of the goals of this site is to provide a comprehensive, one-stop-shop, for all “inter partes review” Orders issued by the Board.  While the rationale for staying a pending reexamination in view of an IPR relating to the same patent has been covered in past posts (for example, HERE), for the sake of completeness, we briefly note here that another reexamination proceeding has been stayed in view of an inter partes review.

Specifically, in a pair of Orders issued in Motorola Solutions v. Mobile Scanning Technologies (IPR2013-00093), the Board decided not to join an ex parte reexamination and inter partes review that were directed at the same patent.  Instead, the Board chose to stay the reexamination in view of the IPR.

The motion for joinder was based on a concern by the patent challenger that separate proceedings could result in different claim constructions, examinations based on incomplete information, and inconsistent amendments or arguments made with respect to the patent-in-issue.  While the Board was sympathetic to these concerns, it decided that merging the two proceedings could complicate and delay the inter partes review.

Instead, the Board granted the concurrent motion to stay the ex parte reexamination in view of the IPR.  As has been its practice, the Board gave a nod toward the general rule that it will not ordinarily stay a reexamination in view of an inter partes review.  But, the Board then went on to, again, stay the co-pending reexamination because the decision to institute an IPR, and any final written decision relating thereto, will simplify issues in the reexamination. Only time will tell if the Board actually decides not to stay a co-pending reexamination in view of an IPR.

Third Inter Partes Review Trial Offers Clarification on Several Key Issues

As with any new creature in the law, inter partes review proceedings, created in the America Invents Act, will require time and interpretation before their nuances will be understood.  Virtually every new order issued by the Patent Trial and Appeals Board has provided at least some level of context for the new IPR rules, and the third ever decision instituting an inter partes review is no different.  In Macauto USA v. BOS Gmbh & KG, IPR2012-00004, the PTAB decided on January 24, 2013 to institute an inter partes review trial on most, but not all, of the claims challenged by the petitioner therein.  Most interesting about the decision, however, is the interpretation provided regarding two key issues in the IPR rules; namely clarification of: 1) the statutory bar from 35 USC §315(b); and 2) the effect of a prior proceeding (here a reexamination of the patent-in-suit), on the institution of an inter partes review, pursuant to 35 USC §325(d).

[pullquote align=”left|center|right” textalign=”left|center|right” width=”30%”]35 USC §315(b) — “An inter partes review may not be instituted if the petition requesting the proceeding is filed more than one year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent.” [/pullquote]

Statutory Bar

The patent owner in this case asserted that the patent challenger was statutorily barred from filing the IPR petition in light of a previous lawsuit between the parties.  On April 7, 2011, the patent owner filed complaint in federal district court, alleging infringement of the patent-in-suit by petitioner’s Taiwanese parent company.  The complaint was delivered to that Taiwanese company on or about May 13, 2011.  The lawsuit case was later dismissed, without prejudice, pursuant to a stipulation between the parties.

35 USC §315(b) states that a patent challenger has only one year from the date a patent infringement complaint has been served on it to file a petition seeking inter partes review regarding that patent.  Because the petitioner’s parent company was served with an infringement complaint more than one year prior to the filing of the petition for inter partes review, the patent owner argued, this IPR proceeding was statutorily barred.

The Board disagreed that the patent owner demonstrated that the statutory bar was applicable.  First, the Board looked to Federal Circuit precedence that interpreted dismissals without prejudice, and found that such dismissals were treated as returning the parties to a position as though the action had never been brought.  The dismissal of the case with prejudice against the parent corporation, therefore, nullified the effect of the alleged service of the complaint on the petitioner.  Further, while the parent corporation apparently signed and returned a waiver of service, that waiver of service was apparently never filed.  Thus, the patent owner’s failure to demonstrate that a waiver of service was filed was a second, independent reason to not institute the statutory bar.

Effect of Prior Proceeding

The America Invents Act was seemingly enacted with a built-in bias against re-litigating issues that have already been considered by the Office.  Specifically, 35 USC §325(d) states that the Director may reject a petition if the same or substantially the same prior art or arguments were previously considered.

[pullquote align=”left|center|right” textalign=”left|center|right” width=”30%”]35 USC §325(d) – “…the Director may…reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office.”[/pullquote]

Prior to the petition for inter partes review filed in this case, the patent-in-suit was the subject of a request for ex parte reexamination (brought by the same petitioner).  While the request was granted, ultimately all 21 claims of the patent were confirmed as patentable by the Office.  In its Order granting inter partes review, the Board took issue with several determinations by the Examiner in the reexamination — to a large extent second-guessing the previous determinations by the Office.  For example, the Board stated that it “reviewed the declarations [submitted in the reexamination proceeding] and agree[d] with Petitioner that they should not have been given determinative weight by the Examiner.”  Specifically, the Board provided several reasons why it disagreed with the analysis provided by the patent owner’s expert witnesses in the reexamination.  In what will certainly be fodder for future commentary, the Board admitted in its Order that the petitioner did not provide any declarations of its own to refute the declarations provided by the patent owner in the underlying reexamination.  Thus, the Board has disagreed with the analysis and conclusions of the patent owner’s experts on its own, without any countervailing evidence having been provided by the petitioner.

In the end, the Board noted that it is not required by statute to reject the petition just because it was based on facts and arguments previously presented, and it chooses not to do so here, given its disagreement with the patent owner’s experts.


With each passing PTAB Order, more granulation and clarity is brought to inter partes review practice.  In the end, the success or failure of these proceedings to function as an effective and efficient alternative to federal court litigation is going to largely be based upon how comfortable the proceedings are to patent challengers.  The PTAB’s decision to initiate an IPR in the Macauto case has aspects that are certainly favorable to patent challengers – the estoppel of §315(b) has been interpreted in a narrow sense and the option to not re-litigate issues previously before the office, set forth in §325(d), was not exercised.  In addition, the Board challenged the findings and conclusions of a patent owner’s expert witnesses, even in the absence of any argument or expert testimony from the patent challenger.  It is still early, but signs point to inter partes review proceedings being a favorable forum for patent challengers.

PTAB Does Not Tie Inter Partes Review With Related, Pending Applications

The PTAB has issued its second order regarding the consolidation of related “proceedings” in the two companion Inter Partes Reviews brought by Chi Mei Innolux Corp. (CMI) against two patents owned by Semiconductor Energy Laboratory Co. (IPR2013-00028, IPR2013-00038).  In each case, CMI moved to have the PTAB either (1) take jurisdiction over, and suspend prosecution of, an application that claims priority from the patent at issue in the IPR; or (2) review and authorize any further patent filings, claim amendments, etc.  More specifically, CMI argued that the pending (or future) applications may be used to present claims that are patentably indistinct from those at issue in the IPR.  The Board denied the motion, finding that 37 CFR § 42.3(a) (relating to inter partes review jurisdiction) does not require it to take jurisdiction over the related applications and, further, that the patent examiner is in just as good, if not better,  position to review the pending claims vis-à-vis the IPR.  As such, it is not necessary for the Board to review any filings or proposed claim amendments in related patent application(s).

[pullquote align=”left|center|right” textalign=”left|center|right” width=”30%”]37 CFR § 42.3(a) – “The Board may exercise exclusive jurisdiction within the Office over every involved application and patent during the proceeding, as the Board may order.”

37 CFR § 42.2 – “Involved means an application, patent, or claim that is subject of the proceeding.”[/pullquote]

More particularly, the Board pointed out that § 42.3(a) states that the Board may exercise exclusive jurisdiction over “involved” patents or applications.  But, § 42.2 defines “involved” patent as meaning the patent that is the subject of the proceeding and “involved” application as meaning an application that is subject of a proceeding, such as a derivation proceeding.  Order at 2.  The pending, or future, application(s) that claim priority to the patent that is subject of the IPR are not “involved” and there is, therefore, no requirement that the Board take jurisdiction over such application(s).

The Board further declined to review and authorize any filings or claim amendments in any current or future patent prosecution matters.  Such relief would require the Board to be a “gate keeper” for all papers and CMI did not explain why the Board should take on the gate keeper function.  As has become its practice, however, the Board does drop a hint regarding what it may take to convince it to take such action, stating that CMI “has not explained how the claims present in the…application are patentably indistinct from the claims involved in the [subject] patent.” Order at 3.  A patent challenger seeking to obtain the relief sought by CMI in these inter partes review proceedings should attempt to make such a showing – providing a detailed account of how the pending claims are patentably indistinct from the claims at issue in the IPR.

The Board also pointed out that the examiner handling the application(s) is in as good of a position to consider the relative scope of the pending and IPR claims.  For example, “[i]f the examiner makes a determination that the claims of the application are patentably indistinct from the [subject] patent claims, then the examiner can suspend the application pending the outcome of this proceeding.”  Order at 3.

In the end, the Board denied exercising jurisdiction over pending or future patent applications, but did instruct that its ruling be placed in the administrative records of the pending application to put the examiner in that prosecution on notice of the ruling.

Staying Reexamination Proceeding in view of Inter Partes Review

With the inception of Inter Partes Review, and its pseudo-litigation features, there has been considerable anticipation over how the various new rules will be interpreted by the Patent Trial and Appeals Board.  As such, we will be keeping a close eye on all Orders issued by the Board so we can obtain an understanding of how the various rules will be interpreted.  Check back often for updates on these various Orders.

One of the first substantive Orders to come out of the PTAB relates to the consolidation of proceedings that are pending before the Patent Office, issued in Inter Partes Review No. IPR2013-00033(JYC), styled as CBS Interactive Inc., et al. v. Helferich Patent Licensing (U.S. Patent No. 7,155,241).  In the PTAB’s ruling, using the power granted to it in 35 U.S.C. §315, a concurrent reexamination regarding Helferich’s ‘241 patent was stayed pending the IPR involving the same patent.  It is reasonable to conclude that, based on the PTAB’s rationale in the Order, co-pending reexaminations have little chance of proceeding concurrently with Inter Partes Review proceedings, but some background is in order before we review that rationale:

35 U.S.C. §315(d) (introduced in the America Invents Act) granted the Patent Office Director the authority to set rules regarding the manner in which Inter Partes Review or any other proceeding before the Patent Office may proceed, “including providing for stay, transfer, consolidation, or termination of any such matter or proceeding.”  The Patent Office promulgated such a rule, in 37 CFR §42.122, stating that the Board may, during the pendency of an Inter Partes Review, enter any appropriate order regarding such an additional matter.

In CBS Interactive, the Board exercised the authority granted by Congress, and articulated in the Inter Partes Review rules, to stay a pending reexamination relating to the ‘241 patent pending the outcome the CBS Interactive IPR.  Based on the rationale articulated by the PTAB, it is hard to imagine how many reexamination proceedings can survive a subsequent IPR filing.  To that end, the Board gave credence to the fact that it will “ordinarily” not stay a reexamination in light of the requirement that reexamination proceedings be conducted with “special dispatch.”  Order at 2.  The Board went on, however, to articulate six facts that weighed in favor of staying the reexamination – each of which seemingly will be present in every Inter Partes Review:

1)         Even though the claims in the reexamination were not the same as those in the IPR, all independent claims were being reexamined under the same prior art as put forth in the IPR.  Id. at 1-2.

2)         Four of the five petitioners for IPR are also the third-party requesters who filed the request for reexamination.  Id. at 2.

3)         Conducting the reexamination concurrently with the IPR would duplicate efforts within the Patent Office.  Id.

4)         Because each of the claims challenged in the IPR depend from reexamination claims, either directly or indirectly, the scope of the claims in the IPR could change during the review.  Id.

5)         The patentability of all independent claims of the ‘241 patent would be determined in both proceedings.  Id.

6)         Because of the short and definite timeframe required of Inter Partes Review proceedings, allowing the IPR to move forward will simplify issues in the reexamination.  Id. at 3.

Based on the above facts, the Board decided to exercise its discretion and stayed the reexamination proceeding pending the termination or completion of the CBS Interactive IPR.  There is nothing to fault about the PTAB’s reasoning in ordering a stay – for example, there would indeed be considerable duplication of effort if both proceedings were allowed to move forward concurrently and efficiency does dictate a stay.  What is unusual about the order is the PTAB’s comment that it will not “ordinarily” stay co-pending proceedings when it is clear that failing to stay co-pending reexaminations would, in most cases, lead to this duplication of effort.

As such, there is at least something in this Board Order that will help both parties to a stay issues – parties opposing a stay can point to the “presumption” articulated by the PTAB that it will not “ordinarily” institute a stay and parties supporting a stay can point to the facts that lead to a stay (many of which will likely be present in any situation that includes co-pending reexamination and IPR proceedings regarding the same patent).  In the end, though, we would view as low the likelihood that a reexamination proceeding will move forward concurrently with an Inter Partes Review.