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

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

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

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

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

Second Petition Seeking Post Grant Review is Filed

iStock_000012593731SmallFinally, the “PGR” portion of this site is starting to gain some momentum as Accord Healthcare brought the second ever Post Grant Review PetitionAccord Healthcare, Inc. v. Helsinn Healthcare S.A., et al., IPR2014-00010.  Accord challenges the validity of the patent-in-suit pursuant to 35 U.S.C. § 112(a) (lack of written description and enablement) and 35 U.S.C. § 112(b) (failure to particularly point out and distinctly claim the subject matter the inventors regard as the invention).

As the “theory” of Post Grant Review has been discussed and evaluated, § 112 grounds, like those raised in this PGR, were considered ripe opportunities for challenges in these new proceedings.  The underlying downside of such action, however, was the strong estoppel that attaches to Post Grant Review that will cripple future attempts to challenge the validity of the patent-at-issue. As compared to IPR, where the estoppel can only apply to §§ 102 and 103 grounds, based on printed publications or patents, in a PGR, the estoppel extends to all grounds of invalidity that were raised, or reasonably could have been raised.

Where a § 112 defense is a Petitioner’s best defense, though, it seems likely that such defense will be given a more thorough and competent review at the PTAB, with its stable of technically-oriented and patent-savvy judges, than it would with the typical district court judge in federal court litigation.