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.

PTAB Claim Construction Ruling Wipes out Half of Challenged Grounds, But Trial Still Initiated

iStock_000003630733XSmallIn a case marked by a great number of grounds of unpatentability, Covidien was able to get 14 challenged claims of an Ethicon Endo-Surgery patent into a trial for inter partes review in a case styled as Covidien LP v. Ethicon Endo-Surgery, Inc. (IPR2013-00209), involving U.S. Pat. No. 8,317,070.

The ‘070 patent relates to surgical stapling devices which are “capable of producing staples of different formed length” when applied to tissue.

After listing the prior art references relied upon by Patent Challenger, the Board listed the 36 alleged grounds of unpatentability, stretching nearly two pages of the decision. Following, the Board conducted a detailed claim construction analysis, beginning with the phrase “two prongs extending non-paralelly from the main portion.” The Board’s claim construction mimicked that of a typical district court claim construction analysis, including citations to the claims, specification and file history. Ultimately, the Board agreed with Patent Owner.

Then, the Board moved to analyze the alleged grounds of unpatentability, beginning by noting that 18 of the 36 grounds of unpatentability alleged by Patent Challenger relied on a construction of “extending non-parallely” which was inconsistent with the Board’s interpretation. The Board accordingly declined to analyze these grounds. Of the remaining 18 grounds which relied on a construction consistent with the Board’s definition of the limitation, all relied at least in part on one reference which accounts for the “extending non-parallely” feature.

Patent Challenger combined this reference with three other references, all of which disclosed a type of surgical stapler, to form several obviousness grounds. Relying on the three references, as well as expert testimony, Patent Challenger showed that the reference taught all limitations of the challenged claims, including the “anvil” and “formed staple length” limitations. Completing a lengthy, but straightforward obviousness analysis, the Board granted the Petition as to several obviousness grounds.

Despite having half of its numerous alleged grounds of unpatentability doomed by reliance on inconsistent claim construction, Covidien was able to get 14 challenged claims of the ‘070 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.

Short-Shrift Analysis of Dependent Claims Costs Patent Challenger in Inter Partes Review Institution

The OfficeMeans-plus-function claim limitations took center stage in Honeywell’s challenge of 20 claims of an HVAC Modulation Technologies patent, with the Board ultimately putting 17 of those claims into an inter partes review trial in Honeywell Int’l Inc. v. HVAC Modulation Tech. LLC (IPR2013-00096), involving U.S. Pat. No. 5,590,642.  The ‘642 patent had previously survived an ex parte reexamination proceeding.  Interestingly, the Board did not institute with regard to three of the challenged claims, despite the fact that Patent Owner did not file a Preliminary Response.

The ‘642 patent relates to control systems for burners used in heating, ventilation, and air conditioning (“HVAC”) systems. More specifically, the ‘642 patent discloses a complex system of sensors, modulating gas valves, controllers, and algorithms which allows HVAC systems to operate in various settings and respond to changes in building load.

In light of the absence of a Preliminary Patent Owner Response, the Board’s claim construction analysis was straightforward, with the Board adopting “for purposes of this decision” the constructions proposed by Patent Challenger. The Board then went on to detail how many of the challenged claims were contained within one of the cited prior art references, thus providing the reasonable basis required to institute the trial.

The Board did not, however, include 3 claims in the trial.  With regard to claim 16, for example, the Board found that Honeywell had failed to provide a sufficient and credible explanation as to how the prior art described the features recited in this challenged claim.  It seemed, instead, that Honeywell had short-circuited its analysis by relying on an analysis provided with other claims, but those other claims did not mention all the limitations of claim 16.  No reasonable likelihood was, therefore, found with respect to this claim, based on several potential grounds for challenge.  A substantially similar analysis was performed with regard to claims 17 and 23.

In the end, the Board’s decision is another cautionary tale regarding the need to provide complete analyses and evidence in a Petition to prevail in an inter partes review.  The Board is proving to be meticulous in its analysis and will not overlook even minor errors in its patentability analyses.

Board’s Broad Reading of Claim Term Results in Institution of IPR Trial

Cloud computing conceptContinuing its successful challenges of Clouding IP patents, Oracle placed all challenged claims of another Clouding IP patent into inter partes review in a case styled as Oracle Corp. v. Clouding IP, LLC (IPR2013-00088), involving U.S. Pat. No. 7,254,621.

The ‘621 patent relates to methods, systems, and computer programming instructions that enable users to remotely access and manipulate information in a way that may not be possible or practical based on inherent limitations of the users’ pervasive devices (i.e., mobile devices and smart appliances).

The key to the Board’s decision was its interpretation of “receiving a data access request,” and that limitation’s impact on the remainder of the claim.  More specifically, Patent Owner contended that the claim allowed for only one data access request.  To that end, the claimed method goes onto require “obtaining the requested data,” “determining what data manipulation operations are available for the requested data,” and “providing references to the determined data…”  Per Patent Owner’s argument, therefore, the antecedent basis in the claim seemed to reference the “receiving a data access request” step from the claimed method.

The Board, however, disagreed.  Because the claim contains an open-ended transitional phrase “comprising,” the claim was construed as open ended and other “data access requests” could occur and still fall within the scope of the claim. To that end, the Board held, “[o]btaining data in response to other data access requests, in addition to the one particular data access request, is not excluded by the claim language at issue.”  Order at 8.

Based on this construction, the Board initiated an inter partes review trial based on 102(e) grounds, finding that, even though the anticipatory reference discloses a process in which multiple links must be selected by a user, the claims were not limited to a single data access request, as discussed above.  As such, the Board found that all of the claim limitations were met by the reference. Following this finding, the Board did not consider the two obviousness grounds presented by Patent Challenger, deeming them redundant.

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.

52 for 57: Oracle Successful Again in IPR War Against Clouding IP

The IPR battles between Oracle and Clouding IP continue, with 17 petitions for Inter Partes Review currently pending.* In this installment, Oracle was successful in getting seven of ten challenged claims of a Clouding IP patent into an inter partes review trial in a case styled as Oracle Corp. v. Clouding IP, LLC Inc. (IPR2013-00089), involving U.S. Pat. No. 6,631,449.

The ’449 patent relates to methods and systems for maintaining the consistency of storage objects across distributed networks. More specifically, the ‘449 patent discloses a dynamic distributed data system and method that provides reduced complexity and is extensible, scalable, and isotropic.

The Board began with a findings of fact, detailing pertinent information in the two main references that Patent Challenger cited in its grounds for unpatentability. Then, the Board turned to a brief claim construction analysis, where it interpreted the terms “a repository of last resort,” “a name tag,” and “a storage object.” After hearing interpretations from both Patent Challenger and Patent Owner, the Board looked to the specification and a technical dictionary to obtain constructions of each, with the result being disagreement with Patent Owner in only one instance.

Then the Board moved on to an analysis of the alleged grounds of unpatentability. Patent Challenger alleged the challenged claims were anticipated or obvious over four combinations of prior art references. As to the anticipation grounds, the Board declined to grant Patent Challenger’s proposed grounds, basing its decision on the holding that the cited reference did not describe the same, “repository of last resort,” as was cited in the challenged claims of the ‘449 patent.  The “repository of last resort,” as described in the prior art was deemed different than the same phrase, as used and claimed in the ‘449 patent.

There were mixed results for the claims challenged on obviousness grounds. In an analysis that did not stand out for any particular noteworthy analysis, seven of the ten challenged claims were placed into the IPR trial based on a single ground of unpatentability.

*As we continue to get caught up on past decisions (in between billable hours), we note that the battle between Oracle and Clouding IP has been settled, with all 17 IPR proceedings having been terminated by joint stipulation and the filing of a settlement agreement.

51 for 56: Two IPR Trials Granted, Despite Dozens of Grounds Being Denied as Redundant

All challenged claims of two Belden, Inc. patents, directed to a data cable, were forced into IPR trials in cases styled, Berk-Tek LLC v. Belden Inc. (IPR2013-00058 and IPR2013-00059), involving US Patents No. 7,977,575 and 7,135,641. The Patent Owner did not file a preliminary response in this case. Trial was instituted for all 34 claims of the ‘575 patent and all 22 claims of the ‘641 patent.

The patents are directed to a high performance data cable using twisted pairs of conductors. The cable incorporates an interior support around which the twisted pairs are disposed. The interior support is characterized as a “star separator” and has a center region with four “prongs or splines” extending from the central region. Twisted pairs of conductors are disposed within grooves or channels formed between the splines.

In the IPR2013-00058 case, Petitioner challenged 34 claims by asserting 86 anticipation and obviousness challenges, involving 16 different prior art references, that took over 8 pages of the decision to list. The IPR2013-00059 case involved 22 claims in which 16 separate challenge grounds were alleged based on 7 prior art references.

Because no special meanings were alleged by the Petitioner, and no preliminary response was filed wherein Patent Owner could assert its own construction of the claim terms, the Board simply stated that all claim terms of the ‘575 patent had their ordinary and customary meaning, and jumped right into an analysis of the challenge grounds. The Board dutifully waded through analysis of the maze of challenge grounds for 17 pages to address nine grounds that the Board felt involved the most important reference. These nine grounds provided a reasonable likelihood for success as to all challenged claims of the ‘575 patent. The Board then dismissed the remaining 77 challenge grounds as redundant. A similar analysis occurred in the IPR2013-00059 case as the Board set forth a straightforward analysis, dismissing numerous grounds as redundant.

In the end, the Board granted trial on all 56 challenged claim of the two patents. In general, petitioners are rightfully concerned that the estoppel provisions of Inter Partes Review proceedings militate towards including more grounds for unpatentability versus less.  The Board’s continued efforts to severely curtail the ultimate IPR trials, however, suggests that effort on the part of petitioners is oftentimes being wasted, especially here, when almost 100 grounds were deemed redundant and denied.

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).