PTAB Provides Guidance on Motions to Amend

Since the Federal Circuit’s complicated, 5-opinion decision regarding motion to amend practice in inter partes review proceedings, we have been awaiting developments that will teach us what life in a post-Aqua Products world will look like. We received our first such development in a memorandum from the Chief APJ, David Ruschke, providing “Guidance on Motions to Amend in view of Aqua Products.”

At threshold, the PTAB’s guidance starts with the only true holding from the Aqua Products case, that the burden of proving patentability no longer should be placed on Patent Owners. Practically speaking, this shift in burden to the Petitioner seems to eliminate the burdensome hurdles to a successful motion to amend that the PTAB has developed in its decisions, starting with Idle Free

Instead, a Patent Owner must only meet the requirements of 35 U.S.C. § 316(d) and 37 C.F.R. § 42.121 (IPR)/42.221 (PGR). Below is a checklist of the requirements from those sources that should lead to a motion to amend that is considered on the merits by the PTAB:

  • Patent Owner must confer with the Board before presenting a Motion to Amend;
  • The Motion to Amend must be filed no later than the filing of a Patent Owner Response;
  • The Motion to Amend must only propose a reasonable number of substitute claims (the presumption being that only one substitute claim would be needed to replace each challenged claim);
  • Any amendment(s) to the claim(s) must respond to a ground of unpatentability involved in the trial;
  • The amendment(s) must not enlarge the scope of the original claims;
  • The amendment(s) must not introduce new matter, including:
    • Setting forth the support in the original disclosure for the patent for each claim that is added or amended; and
    • Setting forth the support in an earlier-filed disclosure for each claim for which the benefit of the filing date of the earlier filed disclosure is sought;
  • The Motion to Amend must contain a claim listing, clearly showing any changes (such listing may be presented as an appendix to the motion); and
  • Patent Owner must comply with its duty of candor, including providing the PTAB with any information of which Patent Owner is aware that is material to the patentability of the substitute claims (if such information is not already of record).

If these requirements are met, the Board will determine patentability by a preponderance of the evidence, based on the entirety of the record, including any opposition by the Petitioner.

Lastly, it is notable that, for pending Motions to Amend, the PTAB’s guidance indicates that the Board “generally will permit” supplemental briefing regarding patentability, if requested.

We can see the new Motion to Amend frontier taking shape. Now it’s onto the first PTAB decisions and (probably) on to the Federal Circuit another time or two.

Federal Circuit Demonstrates Willingness to Rein in PTAB’s Onerous Idle Free Rules Regarding Claim Amendments

cafc1Patentees have been generally frustrated with the Board’s unwillingness to grant motions to amend. The Board’s Idle Free case, and its progeny, have added a number of requirements to a motion to amend that are above and beyond the simple requirements set forth in the IPR implementing statute. While the Federal Circuit has, generally, stated that the Board can, via decisions like Idle Free, define the characteristics of IPR proceedings, some of those requirements are beginning to fall by the wayside. Another requirement was knocked down by the Court today in Veritas Techs. v. Veeam Software (August 30, 2016). No longer must a patentee show that added claim elements in a motion to amend are, individually, inventive over the known prior art.  The Federal Circuit’s rebuke of the Board on this point  gives patentees more hope for future amendments.

The Veritas IPR involved a patent covering systems and methods for restoring computer data.  As a first line of defense, the patentee argued for a narrow claim construction in an effort to avoid the prior art.  That argument was rejected by both the Board and the Federal Circuit, with citation to the broadest reasonable construction claim construction standard.  As a second line defense, the patentee presented a conditional motion to amend which explicitly added the patentee’s claim construction argument to the claims.  The Board also rejected that motion, a ruling the Federal Circuit characterized as “based on its insistence that the patent owner discuss whether each newly added feature was separately known in the prior art.”  Specifically, the Board had faulted the patentee for discussing only “the newly added features in combination with other known features.”  The Federal Circuit held that position to be arbitrary and capricious and thus in violation of the Administrative Procedure Act.

Specifically, the Court found several instances in the record where the patentee (or its expert) explained that prior art systems did not contain the newly added features.  The Court could “not see how the Board could reasonably demand more from Veritas,” particularly in light of the “long line of Supreme Court and Federal Circuit cases (including KSR) which note “that novel and nonobvious inventions often are only a combination of known individual features.”  In light of that precedent, the Court “fail[s] to see how describing a combination is meaningfully different from describing what is new about the proposed claims, even in comparison to the unamended claims.”

As a final note, the Court explained the recent grant of en banc rehearing in In re Aqua Products (concerning the allocation of burdens in IPR amendment practice) did not affect the issue in this case.  The Court thus remanded instead of waiting for the decision in Aqua Products.

Federal Circuit Weighs in on 3 Aspects of IPR Proceedings in Synopsis v. Mentor Graphics

cafc1Today in Synopsys Inc. v. Mentor Graphics, the Federal Circuit answered several new questions about the PTAB’s duties and the Federal Circuit’s powers of review during and after an inter partes review.

The first—and perhaps most significant—issue in this appeal was whether the PTAB must give a decision regarding all claims that the petitioner challenges. In this case, Synopsys had challenged 19 of Mentor Graphics claims in US 6,240,376, but the PTAB only instituted review on 12 of those claims, and only found 3 of those to be unpatentable in the final written decision. Synopsys appealed, arguing not only that the nine surviving should be held unpatentable, but also that the PTAB was statutorily obliged to address the seven claims on which IPR had not even been instituted. The logic of Synopsis’ argument is that 35 U.S.C. § 318(a) provides that the PTAB “shall issue a final written decision with respect to the patentability of any patent claim challenged by the petitioner… .” Synopsys reasoned that because it had challenged 19 claims, the PTAB was obliged to rule on 19 claims, even if the PTAB had only granted review on 12 claims. The majority opinion—authored by Judge Dyk—dismissed this argument because even Synopsys admitted that it would make little sense to have the PTAB pass on claims about which a full record had not been developed. The majority opinion also noted that § 314(a) speaks of “claims challenged in the petition,” while § 318(a) speaks of a “claim challenged by the petitioner.” The majority cited Bailey v. United States, 516 U.S. 137, 146 (1995) for the proposition that when Congress uses two different phrases, this suggests that the two are to be given different meanings (likening “challenged by the petitioner” and “challenged in the petition” to “used” and “intended to be used” in Bailey).

In other words, the majority held that both the plain text of the statute and common-sense considerations regarding statutory purpose favor the PTAB being only obliged to pass on claims for which IPR was instituted. The majority also noted that even if the statutory text had been ambiguous, Congress had committed the implementation of the America Invents Act (AIA) trial procedures to the USPTO’s expertise, so the USPTO’s implementing regulations are entitled to Chevron deference. The USPTO interprets its regulations as not requiring final decisions regarding claims on which IPR was never instituted, and this is further reason why Synopsys’ appeal fails. This is yet another case showing the Federal Circuit’s great deference to the USPTO’s decisions about how IPR trials are supposed to work. See, In re Cuozzo Speed Tech., 793 F.3d 1268, 1279 (Fed. Cir. 2015); Ethicon Endo-Surgery v. Covidien LP, 2016 U.S. App. LEXIS 473 at *23 (Fed. Cir. Jan. 13, 2016).

Another Synopsys argument for why all challenged claims need to be addressed in one IPR is that IPRs are supposed to resolve invalidity contests concerning documentary prior art (i.e., patents and printed publications) quickly and efficiently. If the PTAB may address some challenged claims but not others, this frustrates the Congressional intention to bring an expedited resolution to novelty/obviousness issues. The majority held that there is “no inconsistency” between the intended efficiency and the piecemeal nature of the PTAB’s review here, because the statute plainly contemplates the possibility of novelty/obviousness contests in both an IPR and a corresponding district court trial (e.g., where some invalidity contentions are based on documentary prior art, and others are based on prior public use). This drew a vigorous dissent from Judge Newman, who made it clear that she thinks that an IPR is supposed to be something that one does instead of—not in addition to—litigating novelty/obviousness in court.

A second interesting question at stake in this case was whether Mentor Graphics should have been allowed to enter a substitute claim set. Just as in the overwhelming majority of AIA trials in which the patent owner seeks to amend, the PTAB refused the proposed amendments. The Federal Circuit has twice affirmed the USPTO’s regulations regarding amendments in IPRs. Microsoft Corp. v. Proxyconn Inc., 789 F.3d 1292, 1303 (Fed. Cir. 2015); and Prolitec Inc. v. ScentAir Techs., 807 F.3d 1353, 1363 (Fed. Cir. 2015). Mentor Graphics attempted to distinguish these cases on the logic that neither had squarely addressed the issue of whether the USPTO’s approach to IPR amendments is consistent with the statutory provision (35 U.S.C. § 316(e)) that “the petitioner shall have the burden of proving a proposition of unpatentability,” (emphasis added). The majority was not impressed with this argument, and noted that § 316(e) begins with the introductory phrase “[i]n an inter partes review instituted under this chapter… .” The majority considered that “instituted under this chapter” means that the only claims for which the petitioner must prove unpatentability are the claims on which review was initially granted. Because Mentor Graphics’ substitute claims were not in the case at the time of institution, the burden allocation in § 316(e) does not apply to Mentor Graphics’ substitute claims. Once again, Judge Newman dissented from this part of the opinion, just as she had done in Prolitec, 807 F.3d at 1365.

Finally, the last interesting question at stake in this case was whether district court review of an IPR decision is available under the Administrative Procedures Act (APA). As this blog recently noted, this question has not been definitively answered, but what little evidence we have suggests that APA review is not available. Synopsys had filed parallel proceedings—challenging the PTAB’s decision not to review all 19 challenged claims—before both the Federal Circuit and the U.S. district court for the Eastern District of Virginia. The district court dismissed this challenge because it concluded that the AIA strips courts of jurisdiction to hear APA challenges to IPR decisions. The Federal Circuit held that because its own ruling here disposed of all the same issues that were at stake in the APA challenge before the district court, that the APA appeal was moot. Therefore, the Federal Circuit dismissed the APA appeal and vacated the district court’s ruling on the subject. Judge Newman also dissented from this holding. Judge Newman considered that the district court was correct—i.e., that the AIA really does strip courts of the authority to hear APA challenges to IPR decisions—and that the district court’s ruling should be affirmed, not vacated. In other words, while the subject of APA review remains technically an open question, this case stands as further evidence that APA review is not available from IPR decisions.

PTAB Highlights Motion to Amend Decision

iStock_000017878764XSmallAnother day, another key decision from the PTAB. This time, the Board has highlighted a Motion to Amend opinion entered in MasterImage 3D, Inc. v. RealD, Inc., IPR2015-00040, decided by six Administrative Patent Judges.

At threshold, the Board commented that Patent Owner’s request for a telephone conference to discuss its Motion to Amend (a requirement under 37 CFR 42.121) should have been requested earlier. The Board suggested that such conferences should be requested at least 10 business days before the due date for the motion.

Turning to the meat of the opinion, the Board pointed out that its decision was crafted to make three points of clarification relative to the requirement of the ubiquitous Idle Free decision regarding Motions to Amend. More specifically, the decision was directed to what was required for Patent Owner to show patentable distinction over the prior art of record and prior art known to the patent owner.

First, the Board pointed out that “prior art of record” is: a) material art in the prosecution history; b) material art in the current proceeding; and c) material art of record in any other proceeding before the Office involving the patent.

Second, the Board explained that “prior art known to the patent owner” should be understood as the material prior art that Patent Owner makes of record in the current proceeding pursuant to its duty of candor and good faith to the Office. In that light, a Patent Owner should place initial emphasis on the limitation(s) added to the claim in the Motion to Amend. Notably, the Board pointed out that information about the added limitation can be material even if it does not include all of the rest of the claim limitations.

Third, the Board made clear that, once Patent Owner has set forth a prima facie case of patentability for its narrower substitute claims over the prior art, the burden of production shifts to Petitioner. At that point, Petitioner can: a) explain why no prima facie case of patentability has been made, or b) rebut that prima facie case by addressing Patent Owner’s evidence and arguments and/or by identifying and applying additional prior art against the proposed substitute claims. Patent Owner will have, of course, the right to respond in its reply brief. The ultimate burden of persuasion remains with Patent Owner to demonstrate patentability.

Lessons From the Rare Grant of an IPR Motion to Amend

19377657_sAlthough many Patent Owners have complained about the high hurdles for amending claims in an IPR, the Board’s decision in Riverbed Technology, Inc. v. Silver Peak Systems, Inc. IPR2013-00403 shows that the requirements are not impossible to meet.  In Riverbed, the Patent Owner filed a motion to amend which cancelled all existing claims, and proposed six amended claims. The Board found the Idle Free factors to be met as to two of the six proposed amended claims.  This case also illustrates the value in presenting well-grounded arguments (which the Petitioner is unable or unwilling to challenge), as opposed to arguments that stretch the facts.

(1)  No Broadening of Claim Scope.  The Board noted that Patent Owner’s substitute claims contained all limitations of an original claim and only added further limitations, meaning that the claim scope was not enlarged.  (In fact, the amendments were substantial, taking nearly a page of the Board’s decision to reproduce.).  Notably, the Petitioner did not dispute this point.  Decision at 12.

(2)  Provide Written Description Support. Patent Owner identified support in the original application (referring to paragraphs in the application, not column/line numbers in the issued patent) as to each added limitation of the substitute claims.  Here again, Petition did not dispute that the limitations had written description support.  The Board found that Patent Owner met Idle Free’s written description requirement.  Id. at 12-13.

(3)  Provide Claim Interpretation of New Claim Terms.  Patent Owner provided a table showing three new claim terms, and corresponding broad constructions based on description and figures in the ‘583 specification.  Patent Challenger did not argue that the proposed constructions were incorrect.  The Board agreed with Patent Owner’s proposed constructions, and further adopted the same construction for previously-interpreted claim terms.  Id. at 13-15.

(4) Demonstration of Patentability.   Patent Owner gave a detailed account of known processes (known to the Patent Owner, not just art of record) in the art similar to the substitute claimed process, and even pointed to Patent Challenger’s declaration and references relied upon as examples of the “old” process.  Patent Owner then identified how the new limitations of the substitute claims distinguished over the known process.  Id. at 16-19.  In fact, Patent Owner’s arguments as to claims 28 and 30 were essentially unrebutted by Petitioner.  Id. at 25.  Finally, Patent Owner addressed the knowledge of the ordinary artisan.  Patent Owner pointed again to the new limitations of the substitute claims, and explained how even the strongest art-of-record brought forth by Patent Challenger did not suggest that the specific process defined by the substitute claims was within knowledge of the ordinary artisan at the time of invention.  Id. at 20-22.  Further, Patent Owner provided explanation of how its substitute claimed process solved a problem in the art and was superior to the known process in arguing for nonobviousness.  Id. at 22-24.  The Board thus granted two of the proposed amended claims.

As to the other four proposed claims, though, the Board found Petitioner’s analysis lacking insofar as it failed to show a patentable distinction over the parent claims (the two granted amended claims) or for failure to propose a claim construction for means-plus-function limitations.  The Idle Free test remaining an exacting one.

Proposed Claims in IPR Motions to Amend Can Now Be Placed in Appendix

iStock_000017878764XSmallThe PTAB recently sent out an email alert, directing practitioners to its order providing guidance on Motions to Amend in Corning Optical Comm. RF, LLC v. PPC Broadband, Inc., IPR2014-00441, Paper 19. The Order stemmed from the required “conferral” with the Board regarding a motion to amend, 37 CFR § 42.121(a), and is surely another response from the Board in response to criticism that only one Motion to Amend has been granted to date.

In general, the Board set forth, again, a listing of all the many requirements of a Motion to Amend. Those requirements are reviewed below. What is unique about this Order, and surely the reason it was set forth separately in the PTO alert, is the fact that the Board authorized Patent Owner to place its proposed substitute claims in an appendix, such that it did not count against the 15-page limit for motions to amend. This has been a sore subject with Patent Owners who were otherwise forced to cram all the requirements of the Idle Free decision, and its progeny, along with a listing of the proposed claims, within the 15-page motion to amend. Assuming this is a trend by the Board, this will be welcome to Patent Owners who are have been clambering for a more fair opportunity to address all the many requirements of these motions.

By way of review, we set forth the other requirements of a Motion to Amend that were reiterated in the Order:

  • Proposed substitute claim should be responsive to the ground of unpatentability applicable to the original claim for which it is a substitute;
  • A claim listing is required, including each proposed substitute claim (with any claim having a changed scope included);
  • The proposed substitute claim must be traceable back to the original claim it is intended to replace;
  • If more than one substitute claim is required for a particular claim, the motion should articulate a special circumstance to justify the request;
  • The motion must show clearly the changes of the proposed substitute claim vis-a-vis the original claim (i.e., brackets for deleted text; underlining for inserted text);
  • Patentability must be shown, in general, not merely over the references applied against the original claims;
  • Written description support must be shown for each proposed substitute claim (citing to the original disclosure and showing support for the entire claim, including demonstrating disclosure in any intervening applications);
  • If a new term is proposed, the meaning of which reasonably can be anticipated as subject to dispute, the Patent Owner must provide a proposed claim construction (citation to “plain and ordinary meaning” is viewed as unhelpful – what that meaning is must be provided);
  • Sufficient underlying facts should be provided regarding the proposed added feature, including whether it was previously known anywhere, in whatever setting, and whether it was known in combination with any other elements of the claim (if known, the motion must show why it was not obvious);
  • Patent Owner must reveal what it knows about the new feature (i.e., including a discussion of the ordinary skill in the art, with a particular focus on the feature added, such as a specific discussion about the technical knowledge pertaining to the added feature, whether there are textbooks or conventional practices relating to the feature, and what basic skill set would be possessed by one of skill); and
  • Make a showing regarding the co-pendency and common-inventor requirements of 35 USC § 120 with respect to each ancestral application in the chain of priority applications.

An Overdue Discussion of the PTABs Grant of the First IPR Motion to Amend

17624885_sIt is hard to explain how this post, discussing the first ever granted Motion to Amend in an inter partes review, sat in “draft” mode for over 5 months. This is especially perplexing given the difficulty Patent Owners are experiencing relating to the issue of amending claims in an IPR. But, in a way, the decision has become even more remarkable in the months that have passed since it issued on May 20, 2014, because no other Motion to Amend has been granted. So, today we finally address International Flavors & Fragrances, Inc. v. The United States of America, as Represented by the Secretary of Agriculture, IPR2013-00124, wherein the Board granted the first (and still only) Motion to Amend in the over two years of inter partes review. So….what went right for the US Government given how the amendment process has gone so wrong for every other Patent Owner?

After the Petition by IF&F was filed, Patent Owner (the US Government) did not contest the grounds set forth in the Petition, instead conceding the unpatentability of the challenged claims and filing a Motion to Amend Claims. This motion proposed amended claims 27-45. Order at 2. Of perhaps critical importance in this decision, Petitioner did not oppose the Motion to Amend, leaving the Board by itself to decide the patentability of the amended claims solely on the record presented in the Petition and Motion to Amend.

Following the precedent of Idle Free Sys., Inc. v. Bergstrom, Inc., IPR2012-00027, at 33 (PTAB January 7, 2014 (Paper 66)), the Board noted that in a Motion to Amend, the Board bears the burden of demonstrating patentability of the proposed claims over the prior art in general to be entitled to the proposed amended claims.  Id. at 7. To that end, the Board first determined that the proposed claims were not broadening and had written description support. Id. at 9-10.

The Board then turned to the issue of patentability over the prior art, a hurdle that no other Patent Owner had before, or has since, negotiated. By way of background, the patent-at-issue relates to a new compound useful as an insect repellent. Patent Owner proposed 18 amended claims – 2 independent claims (claims 27 and 45) and 16 dependent claims (that all depended from claim 27). Claim 27 amended an original claim by specifying a Markush group from which the claimed analog was to be selected. Claim 45 added that the claimed repellent is applied against ticks or mites.

Interestingly, the Board first remarked that Patent Owner only addressed the the art presented in the Petition and identified one of those references as the “apparent” closest prior art. More specifically, Patent Owner argued that “Substitute independent claim 27 is patentable over the cited references, of which Behan appears to be the closest known prior art, because the cited references do not disclose or suggest that….” This is the type of conclusory statement that has sunk many previous Patent Owners. See, e.g., Toyota Motor Corp. v. Am. Vehicular Sciences LLC, IPR2013-00419, Paper 32, at 4 (PTAB Mar. 7, 2013) (“Explaining patentability over references applied by the petitioner against the original patent is not the main event.”).

Here, though, the PTAB decided that the US Government had sufficiently demonstrated, beyond the conclusory statement, that “the level of ordinary skill in the art, as well as providing evidence regarding what would have been understood by the ordinary artisan as to those features being relied upon to demonstrate the patentability of the proposed claim.” Order at 12. Specifically, the Board noted evidence that explained that small changes in structure can result in significantly different properties in the chemical compound. As such, because the prior art did not provide a reason to modify the parent compound to arrive at the members of the Markush group of new claim 27, nor did the art provide a reasonable expectation that such modifications would result in a compound having the desired insect repellent activity, the preponderance of the evidence supported the patentability of proposed claim 27. Id. at 15. Notably absent, however, was any explanation why, in this case, a failure to go beyond the art cited in the petition was sufficient, when that has not been the case for many other patent owners.

Because claims 28-44 all incorporated the limitations of claim 27, they were found patentable for the same reasons. Id. 

The Board did reject claim 45 that, as mentioned, sought to claim the use of the parent compound for ticks and mites, because the same compound was shown in the prior art to be effective against cockroaches and mosquitoes. Id. at 17-18. The Board found that maxim that, merely discovery a new benefit of an old process does not render the process again patentable, was applicable here. Proposed substitute claim 45 was, therefore, denied.

When all of the Final Written Decisions that have denied Motions to Amend have been reviewed, it is difficult to come up with a firm understanding of why many other motions that did not discuss the art generally were denied, yet this motion by the US Government was granted. For example, at the the PTAB AIA Roundtable, the Board suggested that a certified prior art search, or some other good faith effort by the patent owner to tell the Board what it knows, especially about the added feature, is required. We are not sure that was done in this case, but the Board still granted the motion. Decide for yourself – the successful Motion to Amend Claims is HERE.

Another Requirement to a Successful Motion to Amend Claims

Concept - businessman who has failedIt is getting hard to keep track of all the hoops and hurdles that need to be navigated in bringing a successful motion to amend in an inter partes review proceeding.  Each new decision seemingly raises the bar further.  The latest task to add to the list is to ensure that, among all the other things that must be established in the 15 page motion, support for the new amendment is shown in the application from which priority is claimed (of course), but also in each intervening application from that priority document through the patent-at-issue.  In Toyota Motor Corp., v. American Vehicular Sciences LLCIPR2013-00415, Paper 40, Patent Owner sought clarification regarding its Motion to Amend Claims and also sought authorization to file a second Motion to Amend Claim in response to procedural argument made by Petitioner in its opposition to the Motion to Amend. Id. at 2. The purpose of the amendment was to allow Patent Owner to point to supporting disclosure in each ancestral application in the chain of applications leading to the original application from which priority was claimed.  Id.

The Board pointed out that, if any application in the priority chain fails to make the requisite disclosure of the claimed subject matter under 35 U.S.C. § 112, first paragraph, the later-filed application is not entitled to the benefit of the filing date preceding the break in disclosure within the priority chain. Hollmer v. Harari, 681 F.3d 1351, 1355 (Fed. Cir. 2012).

There were five intervening applications between Patent Owner’s involved patent and the application from which Patent Owner claimed priority. Yet, Patent Owner’s Motion to Amend Claims discussed supporting disclosure only with regard to the application that issued as the involved patent and the original application.  The Motion to Amend did not include an explanation of support relative to the five intermediate applications. Id. at 3.

The Board determined at the late stage in the proceeding, there was insufficient time to provide Petitioner sufficient time to respond to a second motion. Id. at 4. It was further determined it would be improper for Patent Owner, in its Reply to Petitioner’s Opposition to Patent Owner’s Motion to Amend Claims, to address and account for the supporting disclosures, if any, in any of the five intervening ancestral applications. Id.  As such, another Motion to Amend will surely go down to defeat.

More PTAB Motion to Amend Guidance in Inter Partes Reviews

frustrationIn view of the continued denial of Motions to Amend in inter partes review practice (no motions have been granted to date), it is worth noting a recent decision, from well-respected Judge Jameson Lee, that provides significant guidance on the required content of a Motion to Amend.  Toyota Motor Corp. v. Am. Vehicular Sciences, LLC, IPR2013-00419, Paper 32 (March 7, 2014).

While there have been numerous denials of Motions to Amend, from which practice tips can be gleaned, the linked order provides the most substantive advice on the issue since the seminal Idle Free decision.

Trio of Final Written Decisions Go Against Patent Owner

iStock_000020200155XSmallEarly results of Inter Partes Review proceedings continue to favor Petitioners as all challenged claims in a threesome of Columbia University patents have been cancelled by the PTAB in Illumina, Inc. v. The Trustees of Columbia Univ. in the City of N.Y., IPR2012-00006, -00007, and -00011.

The inventions at issue in the three Illumina decisions involve sequencing DNA by incorporating a base-labeled nucleotide analogue into a primer DNA strand, and then determining the identity of the incorporated analogue by detecting the label attached to the base of the nucleotide.

In general, the Board’s analysis of the prior art in coming to its findings of obviousness with respect to all the challenged claims comprises a fairly straightforward analysis, with heavy reliance on the expert witness testimony elicited in the case.

Of greater interest was the Board’s consideration of secondary considerations relative to the claimed invention.  To that end, Patent Owner argued that the obviousness challenges fail because of: 1) unexpected results, 2) the invention received praise and awards, 3) commercial success, 4) evidence of copying, 5) skepticism, and 6) attempts by Petitioner to license the patents.  -00006 Order at 29.  The Board did not find the proffered evidence on these points persuasive:

Unexpected results: Citing In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991), the Board found that, like that case, here “[m]ere recognition of latent properties in the prior art does not render nonobvious an otherwise known invention.”  Id. at 31.  Further, the Board noted that unexpected results must be made relative to the closest prior art.  In this case, the Board found that the argued unexpected results were not performed relative to the closest prior art, rendering the evidence unpersuasive.  Id. at 33.

Praise and Awards: The Board cursorily brushed aside this evidence, finding “it of insufficient weight and relevance to deem it persuasive.”  -00006 Order at 38.

Commercial Success:  The Board noted that commercial success involves establishing success in the marketplace of a product encompassed by the claims and a nexus between the commercial product and the claimed invention.  In this case, Patent Owner’s expert testified that he reviewed the Petitioner’s technical documents and found that all elements of the patented claims were met by Petitioner’s offering. Commercial success of the product must, however, “be due to the merits of the claimed invention beyond what was readily available in the prior art.”  -00006 Order at 36.  Because the aspects of the invention argued to be the commercial success nexus were found in the prior art, that evidence was unpersuasive.

Copying:  The Board did not comment on this evidence.

Skepticism:  With the evidence of “praise,” the Board cursorily brushed aside this evidence, finding “it of insufficient weight and relevance to deem it persuasive.”  -00006 Order at 38.

Licensing:  While the Board recognized the evidence of Petitioner’s offers to license the technology, it found that there was “insufficient evidence that the licensing strategy was driven by a recognition of the merits of the claimed invention, rather than knowledge of a patent potentially covering their own product.”  -00006 Order at 38.

Also of interest in the decisions, was the Board’s reconsideration of an earlier reconsideration relating to an issue of incorporation by reference.  In its Decision to Institute, the Board did not grant a challenge ground based on a reference that incorporated another piece of prior art by reference.  In a decision based on Petitioner’s motion for reconsideration, the Board, in a rare move, changed its mind and included the ground in the trial.  In the Final Written Decision, however, the Board went back to its original position that the incorporation by reference was insufficient.

Lastly, it is worth noting that another three Motions to Amend went down to defeat in these three Illumina decisions.  Patent Owners are winless on the point.