Ninth Inter Partes Review Trial Instituted

In the third of four inter partes review trials involving Intellectual Ventures and Xilinx, all instituted on February 12, 2013, the PTAB again has again instituted an inter partes review trial against a Xilinx patent, this time US Patent No. 8,058,897, in the IPR styled as Intellectual Ventures Management LLC v. Xilinx, Inc. (IPR 2012-00020).  As with the previous Orders (see, e.g., HERE), the Board in this IPR proceeding instituted the trial against all challenged claims, granting on four of the nine proposed grounds.

The subject matter of the ‘897 patent covers an integrated circuit that includes multiple dies, wherein a master die receives configuration data for both the master and a slave die.  The key limitations at issue in the Board’s ruling were the terms “integrated circuit” and “die,” with the Board holding that the ‘897 patent claims require a multi-die IC, where a die is a “single piece of silicon that contains one or more circuits and is or will be packaged as a unit” (relying on the “Authoritative Dictionary of IEEE Standard Terms” in coming to this conclusion).

In turning to the Board’s specific analysis of the proposed grounds of unpatentability, a few interesting points are revealed.  At threshold, Patent Owner chided the petition for failing to present prior art that teaches all of the claim elements, including a multi-die IC and, therefore, that the “proposed obviousness rejection” is incomplete.  The Board rejected this argument, finding that IPR proceedings are different than reexamination or continued prosecution in that no “proposed obviousness rejection” is to be made by the Board.  Regardless of how the counter-argument was phrased (it may have been better for Patent Owner to frame its argument that a prima facie case of obviousness had not been advanced), it is eye-opening that the Board accepted a 103 argument where each of the limitations were not found in the proposed combination of prior art.

To come to that obviousness conclusion, the Board remarked that Xilinx did not take into account the level of ordinary skill in the art.  The Board went on to articulate the appropriate level of ordinary skill in the art for this matter, and then went on to find that developing a multi-die IC would have been a matter of routine implementation given that level of ordinary skill.  As such, even though Patent Challenger advanced art that lacked this key limitation of the claims, citing the KSR decision, the Board found that “it would have been within the knowledge and skill set of a person of ordinary skill in the art” to arrange the dies on the same IC, creating a multi-die IC.  Order at 11.

It is also worth noting that the Board rejected, in its discussion relating to Ground 4 (Order at 14-15), the argument by Patent Owner that the Petition was defective for not providing a statement of the precise relief requested.  In a manner that rings of a motion for more definite statement before a district court, Patent Owner had argued that Ground 4 did not specifically articulate the relief requested.  The Board did not accept this argument, finding that Patent Challenger “has substantively provided an underlying explanation of how [the prior art] applied to claims 12-14.”  While the titles used by Patent Challenger may not have been representative of the precise nature it sought, the Board found that to deny Ground 4 based on the titles used would exalt form over substance.  In short, this portion of the decision is interesting because, for one of the very few times, the Board seems to giving some leeway as compared to a strict reading of the Trial Practice Rules.

In the end, the Board instituted the IPR based upon Grounds 1, 2, 4, and 9.  The Board denied Grounds 3 and 5-8, finding that they were cumulative in view of the other grounds that were granted.

At the risk of becoming repetitive, it is worth noting again that the Board did not rely upon the mere recital of “broadest reasonable interpretation,” but rather articulated a specific claim construction for the disputed terms.  Consciously or not, the Board is moving the battlefield for many inter partes reviews to claim construction.  While parties to IPR proceedings must take note of this strong trend, there are certainly risks (especially to patent owners) to articulating claim construction positions in these proceedings and this should be carefully considered when making claim construction arguments.

Eighth Inter Partes Review Trial Instituted

The Order issued in the second of four inter partes review trials involving Intellectual Ventures and Xilinx, styled as Intellectual Ventures Management, LLC v. Xilinx, Inc. (IPR2012-00019), relating to U.S. Patent No. 8,062,968, closely parallels the decision instituting a trial in IPR2012-00018, involving the same parties.  Again, all challenged claims were included in the trial, based on six of the 18 proposed grounds for invalidity.  The remaining 12 grounds were analyzed, but deemed to not have met the reasonable likelihood standard, so were denied.

In general, the rationale for instituting the trial was very similar to the rationale articulated in the previous Order, including the same claim construction issues and largely the same discussion of the challenged claims vis-a-vis the prior art.  As such, we do not repeat that analysis here, and merely refer you to our prior report.

In the end, however, its 8-for-8 for patent challengers to date.

Seventh Inter Partes Review Trial Instituted

The last four PTAB Orders from February 12, 2013, that instituted inter partes review trials, were all related to the large battle underway between Xilinx and Intellectual Property Ventures Management.  We will take them in order, first looking to the Board’s decision to institute an IPR trial in Intellectual Ventures Management, LLC v. Xilinx, Inc. (IPR2012-00018) (J. Arbes), relating to US Patent No. 7,566,960.  In that Order, the board denied the proposed ground that sought a finding of unpatentability based on anticipation, but granted the trial on four separate obviousness grounds that covered all 13 challenged claims.

The subject matter of the ‘960 patent was an “interposer disposed inside an integrated circuit package between a die and the package.”  Order at 2.  The Board’s analysis focused on the only really interesting portion of the opinion–claim construction.  To that end, the Board first considered the limitation of the claims that required “an array of landing pads disposed on an inside surface of the integrated circuit package.”  Order at 8.  While petitioner did not proffer a definition of this claim limitation, Patent Owner suggested that the limitation required the IC package to “completely surround” both the IC die and landing pads.  The Board rejected this proposal on a number of grounds: 1) the language of the claim itself did not indicate such a relationship, 2) the specification did not disclose an intent on the part of Patent Owner to define the “inside surface” language consistent with Patent Owner’s proposal, 3) while one embodiment of the specification supported Patent Owner’s position, there was no reason to limit the claim as Patent Owner suggested; indeed, the term “surround” only appeared in the patent on one occasion, relating to a different context, and 4) while an argument made in prosecution was consistent with Patent Owner’s definition, the Board did not find that such argument was an express or clear disclaimer of a broader construction.”  (for those litigators used to relying heavily on the file history to define a claim term, this has to be an eye opener).  Order at 9-10.  In short, in view of the broadest reasonable interpretation, Patent Owner’s proposal was incorrect.

The Board also construed the limitation “means for electrically coupling,” finding that because the word “means” was used, and no structure was recited tin the claim as performing the electrical coupling, the term was subject to 35 USC §112(f).  As compared to other, more cursory means-plus-function analysis in other Orders, in the its analysis here, the Board undertook a detailed analysis of the specification in coming up with its proposed corresponding structure.

In view of the Board’s claim construction positions, it went on to find that Patent Challenger presented arguments that made it reasonably likely that all challenged claims were unpatentable in view of 4 of the 9 grounds proposed in the petition.

Sixth Inter Partes Review Initiated

As part of the Patent Trial and Appeal Board’s busy February 12th, 2012, the Board initiated an inter partes review trial in the proceedings styled as Motorola Mobility LLC v. Arnouse (IPR2013-00010) (J. Chang).  Continuing the winning streak for patent challengers, the Board initiated the trial on all seven challenged claims – that makes six out of six trials initiated, half of which trials were instituted against all challenged claims.

The technology at issue in this inter partes review proceeding relates to a portable computer that connects to a reader adapted for use with the portable computer.  The key limitation of the challenged patent claims required that a user could not interact with the portable computer without a reader; that is, by itself, the portable computer cannot provide information to a user or receive information from a user.

As has become a major trend in the Orders instituting inter partes review trials, claim construction took center stage in the decision.  At threshold, Patent Owner sought to have the petition dismissed, arguing that Patent Challenger actually disavowed claim construction, failing to meet one of the requirements of a petition, by including a reservation of rights statement.  More particularly, the Patent Challenger stated that it “expressly reserves the right to present other interpretations of any of the ‘484 patent claims at a later time, which interpretation may differ, in whole or in part, from that presented within.”  Order at 6.  The Board refused to dismiss the petition, finding first that there was sufficient information provided in the petition to ensure that Patent Challenger’s claim construction position was articulated.  Further, the Board largely dismissed this reservation, finding that the attempt to reserve the right to present different interpretations in the future “to carry little, if any, weight.”  Order at 6.

While the specific claim constructions adopted by the Board are beyond the scope of this article, it is worthwhile continuing to catalogue the considerations and caselaw cited by the Board in coming to its decision.  In addition to the typical citations to the Phillips en banc decision, it is worth noting that the Board gave some weight to statements made by the parties in related litigation.  Specifically, the Board found that “[s]tatements made in a related litigation may shed useful light to the meaning of the claim terms.”  Order at 7, n.2.  Thus, the Board used statements made by Patent Owner in related litigation to inform its claim construction.

Relatedly, the Board used the preamble of the challenged claims to inform its claim construction, as well.  To that end, the Board held that the Preamble is limiting and entitled to patentable weight because it recites additional structure that is not included in the claim body.  Order at 8.

Lastly, without detailed analysis, the Board determined that the subject limitation was a means-plus-function element that invoked 35 USC §112(f), and then merely recited the structure that it determined was corresponding to the recited function from the claim.

In its patentability analysis, the Board made detailed findings regarding three of the five proposed grounds from the petition, holding that two of those three grounds met the “reasonable likelihood” standard requiring institution of the inter partes trial.  As it held in a separate order instituting an IPR trial, however, the Board denied the remaining two grounds as cumulative.  As we previously commented, while the Board may believe at this stage that the additional grounds are unnecessary, it will be interesting to see what transpires should Patent Owner rebut the grounds that were accepted as part of the trial.

Fifth Inter Partes Review Trial Instituted

iStock_000018349879XSmallFebruary 12th was a busy day for the PTAB as it entered six separate decisions instituting inter partes review trials.  We will address each in turn, starting with the Order entered in the inter partes review styled as Nichia Corp. v. Emcore Corp. (IPR 2012-00005) (J. Chang).

In the end, the Board instituted the trial in view of one of the five grounds proposed in the petition–covering all seventeen claims that were challenged.  As a threshold matter, it is interesting to note that the Board did not refute the other four proposed grounds upon which the Board did not rely to institute the trial.  Rather, the Board merely found that those additional grounds were unnecessary as cumulative in light of the determination that there is a reasonable likelihood that the challenged claims were unpatentable as obvious under the single, adopted ground.  Further developments on this point will be interesting to track, including what will happen should Patent Owner successfully rebut the current view of the Board that the claims are unpatentable under the adopted ground.  If the adopted ground is ultimately unsuccessful, Patent Challenger will be estopped from ever raising the four non-adopted grounds due to the estoppel provision of inter partes review.  35 USC 315(e).  There is a chance that Patent Challenger will be unfairly prejudiced by the Board’s unwillingness to consider the other four proposed grounds.

Turning to the decision itself, the patented subject matter relates to the formation of a contact on a semiconductor.  Specifically, the challenged claims require depositing four layers of metal and then annealing the resulting stack.  Dependent claims address the annealing temperature and time, contact resistance, and layer thickness.

The Board found that the primary prior art reference disclosed a contact formed with the four layers required by the challenged patent claims, but not the annealing step.  Order at 10.  In view of the disclosure of annealing in other prior art references, as well as the testimony provided by Patent Challenger’s expert witness, the Board found that one of ordinary skill in the art would understand the need to anneal the stack taught the primary reference.  Order at 11-12.

Turning to the dependent claims, the Board relied heavily on the legal principal that “[d]iscovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art.”  In re Boesch, 617 F.2d 272, 276 (CCPA 1980); In re Aller, 220 F.2d 454, 456 (CCPA 1955).  To that end, the Board found that the dependent claims, requiring annealing temperature or time ranges to reach a certain range of contact resistance, were obvious because one of skill in the art would have been able to discover the optimum value of these variables.  Order at 12-13.  Relatedly, the dependent claims that require the layers to have certain thickness ranges would also be obvious because one of ordinary skill would have optimized the thickness of each layer.  Importantly, with respect to all of the above variables, the Patent Challenger was able to point to a prior art reference that disclosed value(s) that fell within the claimed range.

In the end, as mentioned, the Board instituted an inter partes review trial based on one of the proposed grounds, and the other four grounds were denied as cumulative.  Stay tuned to see if the Patent Owner can turn this around and create an appealable issue relating to those denied grounds.

Fourth Inter Partes Review Trial Instituted

As pitchers and catchers start reporting for Spring Training, it is worth noting that the rookie Patent Trial and Appeal Board is batting 1.000 for patent challengers, having instituted the fourth inter partes review trial out of four decisions it has made.  In Idle Free Sys, Inc.. v. Bergstrom, Inc. (IPR2012-00027), the Board instituted an IPR trial with respect to all 23 claims that were asserted in the petition – a departure from the previous three trials, when most, but not all claims were made part of the proceeding (see, e.g., HERE).

The PTAB’s decision largely turned on claim construction issues, with the Board deciding that several arguments made by Patent Owner in its preliminary response were not persuasive – the terms of the patent were deemed broader in scope than the meaning advocated by the patent owner.  The decision does not contain any significant points of law, but for future reference, it is worthwhile considering a few of the claim construction canons that the Board relied upon in rejecting Patent Owner’s position and instituting this IPR trial.

At threshold, by way of brief factual background, the key limitation at issue related to the term “engine off,” relating to a vehicle engine.  Patent Owner argued that “engine off” could not be met by an engine that is merely stopped or not running, but requires that there be no associated electronics in the ignition system that are primed and ready to automatically start the engine upon detection of a condition.  In short, Patent Owner was arguing that the claim required the vehicle engine to be “completely off.”

Using the Specification to Limit a Claim

One of patent owners’ arguments relied upon the patent specification as support for its proffered claim construction.  The Board discarded this argument, however, because the specification was equally applicable to the broader definition (“off”) and more narrow definition (“completely off”).  To that end, the specification made “no distinction between shut down and completely shut down, and engine off and completely off.”  Order at 10.  Thus, without a specific disclosure that limited the term to the more narrow definition, therefore, the “broadest reasonable interpretation” applied.

Different Terms Have Different Meanings

The patent owner also argued that the “engine off” claim term must be limited to “completely off” because the claim also contained the limitation “engine not running.”  Per Patent Owner’s argument, therefore, “engine off” must not mean the same as “engine not running.”  The Board rejected this argument as well, pointing out that “the claim interpretation principle that different terms have different meanings is only an initial presumption that can be rebutted by evidence such as…how the terms have been used in the specification.”  Order at 10-11.  The Board then relied upon the above-referenced discussion of the specification to refute Patent Owner’s proposed interpretation.

Inherency

The PTAB’s Order was not entirely against Patent Owner, however, as the Board did reject certain of the grounds asserted by Patent Challenger.  In particular, the Board rejected Patent Challenger’s argument that certain art inherently disclosed “that when a vehicle has an engine and the engine is operating, the engine provides power to the air conditioning system.”  Order at 13.  Patent Challenger’s support for this argument was an expert declaration in which the expert stated that the above proposition “was well known in the art.”  The basis for the Board’s rejection of this argument was the fact that just because something is well known is not sufficient to establish inherency.  Inherency may not be established by probabilities or possibilities.

All Elements Rule

Lastly, the Board also rejected other grounds that sought to invalidate certain claims as anticipated because the asserted art failed to disclose all the elements of the challenged claims.  It is not surprising, but is reassuring, that the Board is undertaking a detailed review of the asserted art and not glossing over certain elements in a claim – a practice that is more common at the examination level at the Office.  Instead, the Board is studiously considering each claim limitation and confirming that the asserted prior art discloses such limitations.

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.