Board Denies IPR Challenge Based on Insufficient Chemical Range Overlap

13278506_sDespite a long history of precedence, chemical “range” cases still generate contested issues and inter partes review proceedings are no different. The Board considered an issue relative to an overlap of ranges in E Ink Corporation v. Research Frontiers Incorporated, IPR2014-00422, involving US Pat. No. 6,606,185. Because the prior art cited by Petitioner did not disclose, with sufficient specificity, ranges that overlapped with the claimed ranges of the ‘185 invention, the Petition seeking IPR was denied.

The ‘453 patent relates generally to films comprising heat-reflective particles, and key limitations of the claimed invention recite ranges for particular particle sizes. Of relevance to the range issue of this article, claim 1 of the challenged patent requires “particles hav[ing] an average length in a range between about 1 micron and about 50 nanometers.”

Both Patent Owner and Petitioner acknowledged that the art cited by Petitioner described particle size ranges that overlapped with the ranges claimed in the ‘185 patent.  Specifically, the prior art disclosed “anisometric particles having an average particle size of about 0.2 microns or less, preferably about 0.1 microns or less.” Despite this overlap, Patent Owner argued that (1) the cited art failed to recognize the importance of the claimed lower limit of the ‘185 particle size range; and (2) that the overlap between the art-described ranges and the ‘185 claimed ranges were insufficient for anticipation.

The Board agreed, finding that the cited art did not disclose a lower limit to a particle size range, as required by the ‘185 patent.  The Board also found that the lower limit of the particle size range was key to the ‘185 invention, as Patent Owner emphasized that particle sizes smaller than the lower limit could lead to problems with the invention.  Therefore, because of lack of disclosure of a lower limit to the particle size range, and because the cited art’s range was larger than the ‘185 patent, the Board found that there was no anticipation of the ‘185 claims.

Accordingly, the Board was unpersuaded by Patent Challenger’s range-based anticipation arguments, and denied the petition for inter partes review.

Anticipation Grounds Denied By Board When Elements of Claim Not in Single Embodiment

blank mind map or flowchart on blackboardWith increasing frequency, challenge grounds in IPR Petitions are being denied because Petitioners are attempting to shortcut the proper anticipation analysis by combining teachings from various, distinct embodiments in the prior art, instead of indicating how the prior art discloses, in a single embodiment, each and every limitation of a challenged claim.  See, e.g., Panasonic Corp., et al. v. Optical Devices, LLC, IPR2014-00302, Paper 9 at 13-14 and Symnatec Corp. v. RPost Comunications Ltd., IPR2014-00357, Paper 14 at 20.

When a prior art reference discloses multiple, distinct embodiments, combining teachings from those distinct embodiments requires an obviousness analysis, including a demonstration of why one of ordinary skill would be motivated to combine those disparate teachings.  In contrast, “[f]or anticipation, it is not enough that the prior art reference discloses multiple, distinct teachings that the ordinary artisan might somehow combine to achieve the claimed invention.” Symantec, at 20 (citing In re Arkley, 455 F.2d 586, 587-88 (CCPA 1972); Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008)).  The lure of a 102 argument where 103 is more appropriate can, apparently, be too strong to pass up on occasion.

53 for 58: Another Oracle win over Clouding IP

In yet another petition against Clouding IP, Oracle was successful in getting all thirteen challenged claims of a Clouding IP patent into inter partes review trial in a case styled as Oracle Corp. v. Clouding IP, LLC Inc. (IPR2013-00075), involving U.S. Pat. No. 6,925,481.

The ’481 patent relates to pervasive computing, and more specifically describes methods, systems, and instructions for enabling users of pervasive devices (i.e., mobile devices, smart appliances, etc.) to remotely access and manipulate information in ways that may go beyond the inherent limitations of the device. The idea behind this was to allow users to have “anywhere, anytime” access to desirable services like voice and data communications.

The Board began with a findings of fact, outlining the content of importance in the main reference that Patent Challenger cited in the allegations of unpatentability. Then, the Board turned to fairly in-depth claim construction analysis, where it began with the phrase, “receiving a data access request.”  The Board rejected Patent Owner’s  interpretation that the steps of the claimed method must occur only in response to data access request required by the claim.  The Board deemed this interpretation too narrow because: 1) the claim was open-ended (including the transitional “comprising” phrase), and thus was not limited to only one type of data access request; 2) language from other claims confirmed that other data requests could occur; and 3) the specification did not indicate that other data requests could occur.  Next, the Board evaluated the meaning of, “location of each data manipulation operation.” Finding no meaningful difference between the proposed constructions from Patent Owner and Patent Challenger, the Board adopted an interpretation that was the similar to both, but more precise. Finally, the Board needed only to rely upon a specific definition of the term “data” from the specification.

Then the Board moved on to an analysis of the alleged grounds of unpatentability. Patent Challenger alleged the challenged claims were obvious over four combinations of prior art references, and also anticipated by one prior art reference that was also cited in an obviousness challenge. As to the anticipation grounds, the Board granted Patent Challenger’s petition, finding that Patent Owner’s arguments for patentability over the prior art were either misplaced or dependent on claim construction that was narrower than the Board’s claim construction. Then, the Board considered the obviousness challenges. After granting the petition as to one of the challenged claims over a set of prior art references, the Board declined to consider obviousness over the other three combinations of prior art references, stating that the alleged grounds of unpatentability were redundant.

In summary, the Board granted trial for all thirteen challenged claims of the ‘481 patent based primarily on anticipation grounds, but also a single ground relating to obviousness of one challenged claim.

*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.

47 for 52: Expert Declaration Provides Support for Grant of Inter Partes Review Trial

Mobile phone and tablet with battery chargers in white backgroundExpert testimony played a key role in Motorola successfully forcing three challenged claims of a Mobile Scanning Technologies patent into an IPR trial, in a case styled Motorola Solutions, Inc. v. Mobile Scanning Technologies, Inc. (IPR2013-00093), involving US Patent No. 6,065,880.  Trial was instituted for all three challenged claims based on 5 out of 18 challenge grounds.  Notably, the ‘880 patent was previously involved in a reexamination proceeding, during which the claims at issue were amended.

The ‘880 patent describes an adapter electrically coupled to a PDA. The adapter includes a laser or other light source which emanates a light beam that can be modified into a digital signal to download information to a PDA equipped with a photo detector or used as a presentation pointer. Also, electronic components of the adapter can be integrally incorporated into the PDA, so as to eliminate the need for the adapter.  This single, embedded PDA design is the subject of the challenged claims.

At threshold, the Board addressed three preliminary matters raised by Patent Owner in its Preliminary Response.  First, the Board addressed a defense raised by Patent Owner that the Petition was barred in light of a previous settlement, wherein the Eastern District of Texas retained exclusive jurisdiction over any future action relating to the ‘880 patent.  This issue was addressed in a prior decision by the Board.  In general, the Board found that it was not the right venue to decide if the district court’s order was being complied with.  The requirements for an IPR petition were met, so it was appropriate to move forward.  Patent Owner was instructed to approach the district court to enforce any of that court’s orders.  Second, the Board addressed Patent Owner’s defense that the non-patent references cited in the Petition were not authenticated.  Also, discussed in the earlier order, the Board found that it “will determine the proper weight to accord to the various references at each stage of the proceeding.”  For purposes of this stage, an adequate evidentiary showing had been made.  Third, Patent Owner argued that the IPR is duplicative of the prior reexamination.  The Board held, however, that given that the ongoing reexamination was stayed, that issue was moot.

The Board then moved to a claim construction analysis of disputed terms “PDA” and “microcontroller.”  Turning first to the specification, the Board declined Patent Owner’s efforts to read a synchronization feature or a personal information manager into the definition of “PDA”, finding that the terms were not mentioned in the patent and Patent Owner pointed to no evidence in the prosecution history or other documentary evidence to limit the “PDA” claim term. Without citing evidence, Patent Owner stated that those skilled in the art would recognize that a “microcontroller” is a highly integrated system-on-a-chip and that the term “microcontroller” is not used interchangeably with the term “microprocessor” in the ‘880 patent. However, the specification used both terms and the Board held that there was no distinction between them for the purposes of the claims of the ‘880 patent. Unsurpisingly, given that Patent Owner was unsuccessful in arguing narrower claim constructions, the Board went on to grant trial on all challenged claims.

In finding a likelihood of anticipation of claim 18 by one of the references, the Board relied on the Petitioner’s expert declaration as evidence that components were necessary for a scanner to operate and were inherent in the reference’s disclosure of a bar code processor connected to a microprocessor. Order at 25. Later, the Board relied on evidence from the Petitioner’s expert declaration that an integrated scan engine must have a photo detector positioned to receive light reflected from the bar code an analog-to-digital converter to process the signal and that it was inherent in another reference. Order at 29. Further, the expert declaration was used to establish that the use of visible red lasers in scanners, and the use of a visible laser diode to emit a visible red beam, was well known by the mid-1990s. Order at 34-35. In short, Petitioner’s expert declaration provided significant ammunition to support the Board’s decision.

Patent Owner sought to dissuade the IPR trial by arguing that Petitioner’s sales of mobility products proved non-obviousness, but the Board rejected the argument because Patent Owner did not provide evidence concerning the size and product scope of the relevant market, the Petitioner’s market share, or evidence of a nexus between the Petitioner’s alleged sales and the claimed invention.

In the end, the Board granted trial on all three challenged claims, based on 5 challenge grounds.