Objective Basis for Inherency Argument Must Be Contained in IPR Petition

19179334_sA common strategic question in inter partes review proceedings is whether you should proceed on an anticipation ground, arguing that a specific limitation is inherently disclosed, or convert the ground into an obviousness ground, using an explicit disclosure in a secondary reference to demonstrate the unpatentability of a claim. The perils of going with an inherent anticipation argument, of course, include the additional burden of proving that a reference necessarily discloses the feature, even if it is not explicitly disclosed. As such, it is worthwhile considering Spansion Inc., Spansion LLC, and Spansion (Thailand) Ltd., v. Macronix International Co., Ltd., (IPR2014-01116; U.S. Pat. No. 6,522,360) wherein the Board rejected an inherency argument made by Petitioner.

The ‘360 patent relates to a circuit layout on a substrate of a semiconductor wafer that is suitable for reducing defects during a chemical mechanical polishing (CMP) process.  The process has several key paramenters, including having an average polishing pressure during the process. The substrate comprises a plurality of strips, and the circuit layout comprises two structures linked by said strips. Decision at 2-4.

Petitioner argued that a prior art reference inherently disclosed the claim limitation “at least two strips of second circuit structure located on said substrate of said semiconductor wafer, each of said two strips of second circuit structure respectively linking the front end and the rear end of said plurality of strips of said first circuit structure”.  Id. at 8.  The Board disagreed, finding that Petitioner did not sufficiently address the functional language of the claim limitation as inherently disclosed in the reference. Id. at 8-9.  Specifically, the Board found that Petitioner did not provide enough evidence that the prior art process would apply an average polishing pressure across the circuit grid arrangement of the reference.  The Board criticized Petitioner’s reliance on a bare opinion presented in expert testimony, which essentially recited verbatim the patentability analysis presented in the Petition.  In other words, rather than provide objective factual support for the inherency argument, Petitioner’s expert testimony essentially signed off the arguments set forth in the petition.  Accordingly, the Board rejected Patent Challenger’s inherency argument and denied the petition as to the ground which depended on inherent disclosure in the prior art.  Id. at 10.

Dell Ends Up With a Mixed Bag of Results in 2 IPR Petitions Filed Against Acceleron

Silver Servers Rack - Hosting ThemeIn two separate challenges of a single patent, Dell had lukewarm success with 23 claims being placed in an inter partes review trial, but three claims and multiple grounds also denied by the Board in Dell, Inc. v. Acceleron, LLC (IPR2013-00440 and IPR2013-00443), involving U.S. Pat. No. 6,948,021.

The ‘021 patent relates to a computer network device having components of CPU modules, a power module, and an Ethernet switch module which incorporates “hot-swappable” connectors. The hot-swappable connectors allow for more efficient and speedy repair of the device.

The first issue of interest in the Board’s decision came as part of the claim construction for “is a stand-alone computer.”  Petitioner sought to broaden the scope of that term, based on a claim differentiation argument, but the Board found no reason to deviate from the plain and ordinary meaning of the term.  ‘440 Order at 6.

Also of interest was Petitioner’s inherency argument relating to the limitation of claim 24 that required a limitation relating to filtering communications to limit collisions caused by communications traffic.  Petitioner argued that such filtering was inherent to Ethernet switches, and supplied a declaration that “simply reiterates this position.”  ‘440 Order at 12.  But the Board was not persuaded by this inherency argument.  The patent at issue teaches that ethernet switch modules perform the claimed filtering, not simply a switch.  Because Petitioner did not allege that a switch was the same as a switch module, the Petition failed to set forth a reasonable likelihood of anticipation of claim 24.

Of brief note from the Board’s obviousness analysis, in what is a growing trend, the Board made special mention of the fact that Petitioner articulated a reason for combining the references underlying its obviousness contentions.  That is, not only did Petitioner demonstrate that the combination met all limitations, it also “articulated a sufficient reason with a rational underpinning for combining the teachings…”  ‘440 Order at 15.

In sum, in the ‘440 proceeding, the Board found that 23 of the 26 challenged claims should be placed into an IPR trial.

Turning to the ‘443 proceeding, Patent Owner’s most critical arguments centered on the priority date for certain claims of the ‘021 patent.  To that end, Petitioner argued that certain claims were not entitled to the filing date of a related provisional application.  ‘443 Order at 7.  In its Preliminary Response, Patent Owner set forth the support from the provisional application for the challenged claims and the Board agreed – finding that the claims were properly supported and were, therefore, entitled to the provisional application filing date.

This finding had a ripple effect on the prior art relied upon by Petitioner.  For example, the Board then turned to a prior art reference, that similarly claimed priority to provisional applications.  Patent Owner argued that the reference was not entitled to the priority date of the provisional applications because the excerpts relied upon by Petitioner were not found in the provisional applications.  The Board agreed, finding it important that neither Petitioner, nor its expert, cited to the provisional applications.  Further, Petitioner did not even provide copies of the applications as exhibits.  ‘443 Order at 10.

In the end, Dell’s efforts resulted in a mixed bag – partial success in having 23 of 26 challenged claims entered into an IPR trial based on one petition, but all challenges rejected in the second petition.

Inherency Argument Comes Up Short in Inter Partes Review Petition

Doctor EquipmentDespite having multiple grounds denied, Becton, Dickinson and Company was able to get 8 challenged claims of a One Stockduq Holdings patent into a trial for inter partes review, in a case styled as Becton, Dickinson and Co. v. One StockDuq Holdings, LLC (IPR2013-00235), involving U.S. Pat. No. 5,704,914.  Of interest in the decision is the Board’s decision that a prior art reference at issue did not inherently disclose a flexible catheter.

The ‘914 patent relates to a unique catheter assembly which attempts to remedy the widely-recognized problem of accidental needle sticks related to the catheter needle being exposed during the process. More specifically, the ‘914 patent describes three essential parts of the invention: a catheter, catheter hub, and needle body.

The Board its analysis by construing several claim terms.  First, the Board referred to a conventional, online dictionary to assist in the construction of the term “flexible catheter.” To that end, the Board interpreted “flexible” to mean “capable of bending easily without breaking.” Next, the Board construed the term “flexible resilient diaphragm” to mean a “thin sheet of material forming a partition which is capable of bending or being penetrated by a needle easily without breaking and able to spring back into shape after being penetrated” after consulting the same online dictionary. Thirdly, the Board defined the term “between” (as it relates to the invention parts) as “at, into, or across the space separating (two objects or regions).”  Again, the Board relied upon an online dictionary for this definition.

Other than a conventional patentability analysis, of interest in the Board’s decision was its consideration of Petitioner’s argument that a prior art reference disclosed a “flexible catheter” by disclosing that the catheter may be made from several materials, including PTFE.  Petitioner’s expert even conclusorily stated that PTFE “is commonly known in the medical community as a flexible material.”  Order at 22.  The Board rejected this argument, though, finding that “[t]o show inherency, [Petitioner] would need to prove that a catheter made of PTFE would necessarily be flexible.”  Id. (emphasis in original).  As such, the expert testimony was not specific enough, for failing to state that PTFE is necessarily or always used in flexible form in the medical community.

In the end, despite this failing relating to one of the references, Petitioner was able to get 8 challenged claims of the ‘914 patent into a trial for inter partes review.

Testing that Proved Inherent Properties of Prior Art Accepted by Board

Here is another update on the Corning assault on patents owned by DSM IP Assets (DSM) patents, this one styled as Corning Incorporated v. DSM IP Assets B.V. (IPR2013-00050), involving U.S. Pat. No. 6,323,255.  All 19 claims of the ‘255 patent were placed into the inter partes review trial, based on all five obviousness grounds proposed by Corning.

As in the previous battles, the ‘255 patent relates to compositions that may be used as optical fiber coatings.  In this case, the patent covers coatings that have the properties of resistance to discoloration and high elongation. Specifically, the compositions include “at least one transesterified and/or high-purity monomer” to which the coating’s unique properties can be attributed.

As with the previous Corning v. DSM battles, the key takeaway from the Board’s ruling relates to the inherent disclosure of certain properties of the claims-at-issue in the prior art.  Corning’s over-arching position is that the prior art disclosed the claimed coatings, despite the fact that not all the claimed characteristics of the coatings were explicitly listed in that prior art.  The Board agreed, finding that Corning had established a reasonable likelihood of proving that the 19 challenged claims are unpatentable.

For example, with regard to the limitation that the subject composition, when cured, has “a ΔE value of less than 20 when exposed to low intensity fluorescent light for a period of ten weeks,” Corning acknowledged that the prior art did not disclose this property.  Instead, Corning relied on testing by its employees that showed that the property was inherent in the prior art it cited.

DSM responded by arguing that (1) it was improper to rely upon ex post facto testing to show inherency, (2) no motivation to combine was disclosed, and (3) no showing of “reasonable expectation of success in making the combination” were shown.  The Board rejected each such argument, as explained below.

Ex post facto Evidence

DSM’s argument was based on the erroneous view of the law that an inherent disclosure cannot be part of an obviousness analysis.  As the Board pointed out, “ample case law establishes that inherent disclosure may be relied upon in finding that subject matter would have been obvious at the time of its invention.  E.g., In re Napier, 55 F.3d 610, 613 (Fed. Cir. 1995).”  Order at 11. The Board did point out, however, that unknown properties in the prior art may not be relied upon for providing a rationale for modifying or combining the prior art.  Id.  Corning used the testing in support of the former argument, not the latter.  As such, it was appropriate to consider in the Board’s decision.

Reason to Combine

The Board simply disagreed with DSM that Corning had failed to provide any evidence of a reason to combine.  The art itself, as well as Corning’s expert’s declaration, provided such motivation.

Reasonable Expectation of Success

Again, the Board disagreed with DSM’s finding.  More particularly, the Board stated that “[s]ubstituting a 95% pure monomer for a 90.4% pure monomer does not strike us, on the record currently before us, as a change so drastic that it would raise significant doubt in the mind of a the skilled artisan as tot he properties of the resulting composition.”  Order at 13.  Though the Board left the door open, with this statement, for DSM to provide expert evidence to refute Corning’s position, at this stage of the proceeding, the Board was not convinced that the obviousness argument must fail.

Having accepted Corning’s testing evidence, that proved the inherent properties of the prior art compositions, the Board’s subsequent obviousness analysis was relatively straightforward, resulting in another (preliminary) win for Corning.

60 for 65: Corning Succeeds On Three Additional IPR Petitions

Corning extended its winning streak in its challenges of patents owned by DSM IP Assets (DSM) in three related cases styled as Corning Inc. v. DSM IP Assets B.V. (IPR2013-00043, IPR2013-00044, and IPR2013-00047), involving U.S. Pat. Nos. 7,171,103; 6,961,508; and 6,438,306 respectively.

All three patents relate to optical fibers having multiple-layered, radiation-curable coatings as well as to the compositions of the radiation-curable coatings. The coatings act to confer “microbending resistance” and specifically, the ’103 and ‘508 patents are directed to coated optical fibers in which the coating provides “good microbending resistance” and “a high cure speed.” Further, the ‘306 patent is specifically directed to a coated optical fiber with a cured resin coating which does not restrict the mechanical properties of the optical fiber.

In all three cases, the Board began with a short claim construction analysis. In general, the Board either adopted Patent Challenger’s constructions, or deemed that claim construction was unnecessary at this stage, without providing any meaningful analysis supporting its decisions.

Then, the Board turned to an overview of the petition. In all three cases, Patent Challenger asserted that the subject matter in the challenged claims was only allowed during prosecution because many of the claim limitations were in the form of inherent properties not explicitly set forth in the prior art. To support this position, Patent Challenger relied on the expert testimony of two of its own scientists, one of which reproduced prior art compositions to test them for inherent properties, and the other of which vouched for the validity of testing.

Patent Owner objected to these inherency arguments, arguing that (a) Patent Challenger’s anticipation argument actually required multiple references to explain the testing being conducted, (b) the petition should be denied due to Patent Challenger basing its challenges on ex post facto testing, (c) a person of ordinary skill in the art would not have been motivated to combine the prior art references cited by Patent Challenger to produce the claimed invention, nor would they have had a reasonable expectation of success, and (d) in the cases involving the ‘508 and ‘306 patents, Patent Owner argued that Patent Challenger deviated from the prior art teaching in its formulations and testing, even in one case calling Patent Challenger’s methods “fatally flawed.”

Among the interesting aspects of the Board’s decision was its analysis of whether a particular prior art reference inherently possessed a material limitation of the challenged claims.  To that end, Patent Owner argued that Patent Challenger was relying on a combination of references in its anticipation challenge.  The Board disagreed, finding that Patent Challenger may rely on evidence extrinsic to the primary prior art reference to show that the primary reference inherently possesses a particular property, “so long as the extrinsic evidence establishes that the property is ‘necessarily present in the thing described int he reference, and that it would be so recognized by persons of ordinary skill.'” citing Continental Can Co. USA v. Monsanto Co.948 F.2d 1264, 1268 (Fed. Cir. 1991).  00043 Order at 12.

As in previous Corning decisions, the Board also declined to adopt Patent Owner’s argument that ex post facto testing cannot be used in an obviousness analysis.  Because Patent Challenger was not using the testing to provide the rationale for combining prior-art references to reach the claimed subject matter, the testing was proper evidence in the obviousness analysis.  See, e.g., 00043 Order at 18-19.

It is worth noting that this is an interesting decision for a reason related to the decision whether or not a Patent Owner should file a Preliminary Response to the Petition.  Momentum is certainly on the side of not filing such Preliminary Responses, given the overwhelming rate of Petition grants to date.  That is, given the low likelihood that such a response will be successful, there is little incentive to a Patent Owner to explain its positions early in the proceeding.  In this case, while the Board ultimately granted the IPR trial, Patent Owner was given a detailed exposition of the weaknesses in its arguments, as currently viewed by the Board.  This will give Patent Owner a detailed road map for expert testimony and argument in its formal response in an attempt to rebut the challenge grounds.

In summary, the Board granted the petition of Patent Challenger as to 18 of 18 challenged claims in the ‘103 patent, 22 of 22 challenged claims in the ‘508 patent, and 14 of 14 claims in the ‘306 patent based on obviousness and anticipation grounds, solely obviousness grounds, and solely anticipation grounds, respectively.

45 for 50: Inherent Disclosure Plays Key Role in Grant of Inter Partes Review Trial

Optical fibersCorning was successful in challenging 24 of 34 claims of a DSM IP Assets (DSM) patent in a case styled as Corning Incorporated v. DSM IP Assets B.V. (IPR2013-00052), involving U.S. Pat. No. 7,276,543.  As previously discussed, this is an interesting case given that Corning and DSM have had a long standing business relationship, at least until this IPR battle erupted.  This is the first of 10 IPR petitions filed by Corning.

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.

Board began by interpreting several claim limitations, from the challenged claims, including, “photoinitiator package,” “free radical photoinitiators,” “molecular extinction coefficient,” and “absorption peak” or “shoulder.” Patent Challenger proposed interpretations for all of the phrases, including taking the position that certain recitations from the claims refer to future intended uses of the subject compositions and do not, therefore, limit the claimed compositions.  Order at 5.  Patent Owner generally objected to the proposed constructions as being too narrow, without proposing its own counter-interpretations. Without analysis, the Board decided that Patent Challenger’s interpretations “do not appear unreasonable at this stage of the proceeding” and adopted all Patent Challenger’s interpretations.

The overall theme of Patent Challenger’s Petition was that the challenged claims were allowed during prosecution “simply because many of the limitations were in the form of inherent properties of the claimed composition not explicitly disclosed int he prior art.  Order at 6.  To fill those gaps in the prior art, Patent Challenger relied on the expert testimony of two of its own scientists to show that the properties were, in fact, inherent by virtue of experiments whereby the experts reproduced prior art compositions and tested their properties.

In an effort to defeat this expert-created evidence, Patent Owner argued that the test results were insufficient because they failed to disclose certain significant underlying facts about the testing.  Not completely closing the door on that argument, the Board found that, at this stage of the proceeding, the “data is reasonably clear, and not so deficient that it can be discounted completely.”  More specifically, at this stage of the proceeding, there was no reason to doubt the veracity of the proffered testimony.  Presumably, such doubt, if any, can be created by Patent Owner in the trial with its own expert.  As such, the Board granted a trial based on anticipation based on two references.

Relatedly, the Board found that the use of an inherent disclosure can be used to establish obviousness.  Order at 14.  “It is not a requirement that the inherent properties were known at the time of the invention.”  Id.  Case law cited by Patent Owner on this point was distinguishable because Patent Challenger did not argue that the latent properties themselves  provide the rationale for combining the prior art references.  Instead, Patent Challenger predicated obviousness upon the express teachings of the cited references, plus expert testimony.  In view of this analysis, the Board granted certain obviousness grounds, but denied others, in instituting the IPR trial.

In summary, the Board granted the petition of Patent Challenger as to 24 of the 34 challenged claims in the ‘102 patent on obviousness and anticipation grounds, at the same time, setting forth key analysis relating to the issue of inherency in both anticipation and obviousness contexts.

37 for 42: Previously-Considered Art Lives Again in Grant of Inter Partes Review Trial

iStock_000014464933XSmallThe Board has again failed to toss aside argument and art previously considered by the Patent Office (this time in an ex parte reexamination) and, instead, instituted an inter partes review trial on all six challenged claims in a case styled Nexans, Inc. v. Belden Technologies, Inc. (IPR2013-00057), involving US Pat. No. 6,074,503. Four of 9 proposed grounds for challenge were granted in the Board’s decision.

The invention of the ‘503 patent involves a method of producing a cable. The method includes a step of passing a plurality of transmission media such as wires and a core through a first die which aligns the plurality of transmission media with surface features of the core and prevents twisting motion of the core. The method includes another step of bunching the aligned plurality of transmission media and core using a second die which forces each of the plurality of transmission media into contact with the surface features of the core. The bunched plurality of transmission media and core are twisted close to the cable, and the closed cable is jacketed.

Patent Owner first argued that because three of the references contained in the petition were already considered by the examiner in a prior ex parte reexamination which resulted in confirmation of the claims, the Board should deny those portions of the petition. The Board cited 35 U.S.C. § 325(d) and stated the statute gives the Director the authority not to institute review on the basis that the same or substantially the same prior art or arguments were presented previously to the USPTO, but does not require so. Because the Patent Challenger’s alleged unpatentability grounds have some merit, the Board declined to deny the petition under 35 U.S.C. § 325(d). Order at 8. This continues a trend of the Board’s willingness to consider references even if they were previously considered during original prosecution or a reexamination.

The Board then turned to its claim construction analysis and interpreted the terms “core” and “prevents twisting motion of the core.” Basing its definition of “core” strictly on the specification of the ‘503 patent, the Board found that the term “core” does not have to have a bulky or extensive cross-section and there is no reason to exclude structure in the form of thin tape from forming or constituting the core. The Board also determined that “prevents twisting motion of the core” was met by the prevention of twisting in the area where the core passes through the first die once the desired position of the core for alignment during production is established. Thus, twisting of the core need not be prevented (1) at all places along the axial length of the core, or (2) before the desired alignment of the core has been determined and put in place and cable production has commenced.

The Board then considered several grounds asserting anticipation of the challenged claims.  To that end, Patent Challenger argued that a prior art reference disclosed a branching board of a first die which inherently prevented twisting of the core. The Board rejected the argument, stating that because the disclosure does not show an axial view of the branding board in the direction of cable feed, it could not be known what manner the core passes through the branching board. To establish inherent disclosure, the limitation at issue necessarily must be present in the corresponding element described in the prior art reference. Inherency may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient to establish inherency. Order at 26. The Board found that even if the branching board, in some circumstances, prevented twisting of the core, the possibility is inadequate to establish inherent disclosure of twist prevention.

In the obviousness challenge grounds analysis, the Board determined that inserting an additional die upstream of a wire-splitting board of the assembly of a prior art reference involved merely a predictable use of a prior art element disclosed in other references.  Further, Board held that such a combination need not be predicated on any specific teachings; that is, the Board “need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” Order at 33.

Patent Owner sought exclusion of one of the Patent Challenger’s exhibits on the ground that it constituted inadmissible hearsay. The exhibit is a collection of selected trial transcripts from related litigation, including the testimony of an expert witness. The Board stated that exclusion of evidence at this stage of the proceeding is premature. Order at 41. In any event, the exhibit appeared to have been relied on by the Patent Challenger only in connection with arguments regarding a reference that was not applied as a basis for any granted challenge grounds.

In the end, the Board instituted trial on all challenged claims including, notably, some challenge grounds that used a reference that was previously considered during an ex parte reexamination.

35 for 40: Unsupported Expert Declaration Leads to Denial of Two Petitions for Inter Partes Review

iStock_000015279515XSmallMonsanto had two petitions for inter partes review denied when the Board determined that a supporting expert declaration was entitled to little weight. Monsanto was challenging two Pioneer Hi-Bred patents in cases styled as Monsanto Co. v. Pioneer Hi-Bred Int’l, Inc. (IPR2013-00022 and IPR2013-00023) involving US Patent Nos. 5,518,989 and 6,162,974. The Board denied all challenge grounds for both patents.

The ‘989 and ‘974 patents describe a method of enhancing the quality of maize seed. In particular, the method involves defoliating maize plants after pollination. Generally, the patents describe defoliating the plant at between 600 and 850 growing degree days after pollination. The challenged claims require both defoliating within a specified growing degree day time frame and obtaining enhanced seed vigor.

Patent Challenger relied upon an expert declaration to establish that the prior art references teach and/or provide a reason to defoliate maize plants withing the claimed 600 to 850 growing degree day time frame. Patent Owner disagreed with the expert’s conclusions and contended that the declaration was entitled to little weight, because the expert “withheld data and calculations that underlie his opinions.” The Board agreed that the declaration was entitled to little weight, citing 37 C.F.R. Sec 42.65(a): Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight. Order at 7-8.

The Board found that the declaration failed to provide sufficient underlying data such that one of ordinary skill in the art would have a reasonable basis to believe that his growing degree day calculations and conclusions are correct. Absent the expert declaration, Patent Challenger failed to identify sufficient credible evidence to establish that the prior art meets the growing degree day limitation of the claims, because the prior art references do not discuss the number of growing degree days between pollination and defoliation.

The Board also rejected Patent Challenger’s inherency argument — that enhanced seed vigor is obtained from the prior art defoliation techniques. Patent Challenger again was relying on the expert declaration for this argument, but the Board found that the declaration did not provide a sufficient or credible explanation as to why the ordinary artisan would have expected enhanced seed vigor.  This was especially so in light of the fact that the patents-at-issue taught the opposite.

In the end, Patent Challenger did not provide evidence of how the prior art references taught the claim limitations beyond the expert declaration and that declaration was fatally flawed. Once the Board found that there was insufficient underlying data to believe the calculations and conclusions of the expert declaration, Patent Challenger’s case was lost and the Board denied the petitions.

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.


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.