Which Party Should File Motion to Seal in Inter Partes Review?

7629450_sThe PTAB has taken seriously the importance of public accessibility to information underlying an inter partes review proceeding. As such, motions to seal have been trickier to navigate than might have been expected. One aspect of these motions that has caused some confusion is: Who is the proper party to file a motion to seal? In Clio USA, Inc. v. The Procter and Gamble Company, IPR2013-00438, IPR2013-00448, and IPR2013-00450, the Board denied Petitioner’s Motion to Seal because, while Petitioner sought to enter certain evidence into the record, it was Patent Owner’s information and Patent Owner that wanted the information sealed. As such, it was Patent Owner who should have filed the motion to seal.

In the subject proceedings, Petitioner sought to file deposition testimony as an exhibit to the proceeding. Patent Owner asserted, however, that portions of the subject testimony contained confidential information. To protect the confidentiality of that information, Petitioner filed Motions to Seal in each proceeding.  Decision at 2.

The Board denied the motions, noting that the moving party bears the burden of showing good cause that the subject information should be sealed. To that end, because it was Patent Owner who was asserting that deposition testimony was confidential, it was Patent Owner who should have moved to seal, not Petitioner. Accordingly, Petitioner’s Motion to Seal in each proceeding was dismissed.

Board Discusses Difference Between Supplemental Evidence and Information

Glucosamine & MSM labelingStill confused by the difference between supplemental evidence versus supplemental information? Let’s try this again….In Norman International, Inc. v. Andrew J. Toti Testamentary Trust, Russell L. Hinckley, Sr. (Co-Trustee) and Robert F. Miller (Co-Trustee), IPR2014-00283, the Board addressed an issue of admissibility of evidence, focusing on the differences between supplemental evidence and information.

Petitioner sought to have an exhibit (“Exhibit 1010”) admitted as supplemental information, pursuant to 37 CFR § 42.123(a). For the Board to authorize filing of a document under § 42.123(a), the moving party (Petitioner in this case) must prove that the documents are supplemental information, not supplemental evidence.  The difference between supplemental information and evidence, under precedent of Handi-Quilter, Inc. v. Bernina Int’l AG, IPR2013-00364, Paper 30 at 3 (PTAB June 12, 2014) is, as follows:

“supplemental evidence—served in response to an evidentiary objection and filed in response to a motion to exclude—is offered solely to support admissibility of the originally filed evidence and to defeat a motion to exclude that evidence, and not to support any argument on the merits (i.e., regarding the patentability or unpatentability of a claim). Supplemental information, on the other hand, is evidence a party intends to support an argument on the merits.”  Decision at 6.

Accordingly, Petitioner bore the burden of proving that Exhibit 1010 supported an argument on the merits for the exhibit to be admitted. Patent Owner opposed by arguing that Exhibit 1010 was served in response to Patent Owner’s evidentiary objection to a different exhibit (“Exhibit 1002”). Specifically, Patent Owner objected to Exhibit 1002 and alleged it lacked the required English translation and affidavit attesting to accuracy of translation, and therefore Patent Owner argued that Exhibit 1010 did nothing more than attempt to remedy the deficiencies in admissibility of Exhibit 1002.  Id. at 5-6.

The Board disagreed with Patent Owner, noting that Exhibit 1002 did contain an English translation, and Exhibit 1010 addressed whether that translation was accurate. Accordingly, the Board found that Exhibit 1010 essentially contained information about what Exhibit 1002 actually disclosed. Since Exhibit 1002 contained a reference which served as a basis for grounds of unpatentability (an argument on the merits), the Board found that Petitioner had met its burden of proving that Exhibit 1010 was supplemental information and therefore allowable. Id. at 7.

PTAB Grants Rare IPR “Motion to Compel”

14086935_sMany parties to inter partes review proceedings continue to have their guns pointed directly at their feet, taking erroneous actions that are consistently called out by the PTAB. In the midst of one such error, we explore the Board’s regulations relative to “compelled discovery.” In IPR2014-00041, -43, -51, -54, and -55 (styled as Geo Process Engineering, Inc. v. Steuben Foods, Inc.), an issue arose regarding an omnibus declaration by Patent Owner’s declarant that was not filed. The declarant signed an “omnibus” declaration which pertained to all five inter partes review proceedings pending between the parties. Counsel for Patent Owner then created five separate declarations that were specific to each IPR proceeding.

Oddly, though, counsel did not provide Declarant the opportunity to review the individual declarations before filing. Declarant had to acknowledge in deposition that each individual declaration was different from the others and that each declaration was different than the omnibus declaration (including some red-line edits that remained in the omnibus declaration).  Declarant did testified that the five individual declarations did not contain substantively different testimony than the testimony which Declarant authorized.

In view of these facts, Patent Challenger filed a request to compel the production of the omnibus declaration and allow for cross-examination on that declaration. Both Patent Owner and Declarant himself opposed the request, claiming the omnibus declaration was a draft and subject to work-product protection.

The Board sided with Patent Challenger, finding that the omnibus declaration was not subject to work-product protection under these facts.  The Board stated several factors which persuaded it to grant Patent Challenger’s request, including: (1) Patent Challenger has a strong interest in understanding the differences between the omnibus declaration and each of the five individual declarations in order to evaluate credibility of the declarations; (2) It’s inconsistent for Patent Owner to argue that the omnibus declaration is privileged while simultaneously allowing Declarant to review it for differences between the omnibus declaration and the individual declarations; (3) Declarant’s testimony that there is no substantive difference between the testimony of the omnibus declaration and the five declarations actually filed should not go unchallenged. In the end, the Board granted Patent Challenger’s request to compel the production of the omnibus declaration.

An interesting facet of this decision is that the Board characterized it as a motion to compel, versus the more common motion for additional discovery. The Board did not cite to, for example, 37 CFR 42.52 (“Compelling Testimony and Production”). Further, the production of a document that is in dispute between the parties has, in the past, been considered under the rubric for “additional discovery.” The general belief from commentators to date has been that “compelled discovery” relates to non-parties but there is nothing in Rule 42.52 that specifically limits compelled discovery to third partes. We will have to stay tuned and see if this is merely a vague choice of terminology by the Board, or a trend.

42 for 47: Claim Construction Takes Center Stage in Grant of Inter Partes Review Trial No. 42

In a claim construction-centric decision by the PTAB, Oracle was successful in getting all 10 of the challenged claims of an Clouding IP patent into inter partes review trial in a case styled as Oracle Corp. v. Clouding IP, LLC Inc. (IPR2013-00073), involving U.S. Pat. No. 6,738,799. The ’799 patent relates to a method of synchronizing files using a signature list. More specifically, the ‘799 patent discloses a method for synchronizing local copies of files on a given set of computers with current versions of the files on a network drive.

The Board began with a claim construction analysis that covered several claim terms in dispute. First, in what turned out to be the only instance of the Board adopting Patent Owner’s interpretation, the Board resolved the differences between the parties’ proposed interpretations of the term “signature list.” The Board declined to adopt Patent Challenger’s narrow interpretation in favor of Patent Owner’s construction, finding that the specification did not require the more narrow definition provided by Patent Challenger.

Several other phrases were also evaluated by the Board, the group consisting of “update,” “command to copy,” and “command to insert,” among others. With respect to all these terms, the Board declined to adopt Patent Owner’s narrow interpretations, relying at times on dictionary definitions (Order at 10), the doctrine that it is improper to import limitations from the specification into the claims (Order at 10, 15), pointing to claim language to assist in the interpretation (Order at 11), and considering the preambles of the challenged claims (Order at 16).

The Board then analyzed Patent Challenger’s seven grounds of unpatentability. Patent Challenger alleged four obviousness grounds and three anticipation grounds. Three of the four obviousness challenges were found by the Board to meet the reasonable likelihood standard, with the last one being denied as redundant. Further, in relying upon Patent Challenger’s expert testimony, the Board found that the challenged claims were anticipated by two of the three different combinations of references, with the final one being denied as redundant.

It is worth noting that the Board again discounted the fact that one of the challenged grounds was already considered in the original prosecution of the underlying patent.  The Board has, invariably, provided little deference to prior Patent Office actions.  Order at 22-23.

In the end, the Board granted trial for all challenged claims based on multiple anticipation grounds as well as grounds of obviousness over several combinations of references.

39 for 44: Previously Considered Art Survives Again in Grant of Two Inter Partes Review Trials

The Board furthered its early reputation of providing thorough decisions regarding the institution of inter partes review trials, by digging into dependent claims of the challenged patents and allowing certain claims to survive in two cases styled ABB, Inc. v. Roy-G-Biv Corporation (IPR2013-00062 and IPR2013-00074), involving US Patent Nos. 6,516,236 and 8,073,557. The Board granted trial on 7 of 10 challenged claims for the ‘236 patent and 12 of 29 challenged claims for the ‘557 patent.

The patents relate generally to a system that facilitates the creation of hardware-independent motion control software. In particular, the patents describe a high-level motion control application programming interface (“API”) made up of functions that are correlated with driver functions associated with controlling a mechanical system that generates movement based on a control signal.

Patent Owner specifically addressed proposed interpretations of the terms “primitive operations” and “core driver functions.” Because Patent Challenger’s proposed interpretations for the other patent terms did not appear unreasonable, the Board adopted them “at this stage of the proceeding.” We emphasize this point because it reinforces other decisions by the Board that suggest that a Patent Owner can address claim construction issues again after an IPR trial has been initiated.  As to the term “primitive operations” the Board found that Patent Challenger’s proposed definition was overly and did not comport with an explicit definition provided in the specification.

The Board used a similar analysis in adopting the specification definition of “core driver functions,” against Patent Challenger’s argument that the term was too vague. Patent Challenger’s position “ignores the explicit definition in the claim language itself.”  As should be expected, the intrinsic evidence controlled regarding this claim construction issue.

Having addressed the claim construction issues, the Board turned to Patent Owner’s argument that a prior art reference was cumulative because it was considered during the original prosecution and Inter Partes Reexamination of the ‘236 patent. The Board rejected the argument: “While we are cognizant of the burden on the Patent Owner and the Office to rehear the same or substantially the same prior art or arguments that were considered by the Office in a prior proceeding, we decline to reject the petition solely on the ground that Stewart, a reference related to the operating system upon which Gertz’s system is based, is a member of an eight-page list of references on the ‘236 reexamination certificate.” IPR2013-00062 Order at 13.

Despite that minor victory, Patent Challenger’s anticipation arguments were then rejected because they failed to show that operations performed by control tasks in Gertz were “primitive operations,” as that term was defined by the Board, above. With regard to the grounds based on obviousness, the Board was not persuaded by the Patent Owner’s arguments that the Gertz reference taught away from using primitive operations. The Board did, however, find that limitations in dependent claims 5-7 were not disclosed by the proposed combination of references, preventing a finding of obviousness.  Specifically, the Board found Patent Challenger’s argument that the prior art disclosed the limitation contained in these claims to be lacking.  It is interesting to note that, in a footnote, the Board mentioned that although Patent Challenger asserted the limitations were disclosed by another reference, Patent Challenger did not assert a combination that included that reference as a ground of unpatentability. IPR2013-00062 Order at 17.

After completing its analysis, the Board granted trial on some, but not all of the challenged patent claims of both the ‘236 and the ‘557 patents. The Board’s claim construction analyses, which were based on the definitions disclosed in the specification (rejecting an argument that such definitions were vague) doomed some of Patent Challenger’s anticipation and obviousness challenges.

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.

35 for 37: Partial Victory for Patent Owner As Board Puts Some, But Not All, Claims into IPR Trial

iStock_000013398807XSmallIn recent decisions, the Board has had a soft spot for Patent Owners.  Shortly after denying only the second petition for inter partes review, as previously discussed, only 29 of 40 challenged claims were put into an inter partes review trial in the case styled MicroStrategy, Inc. v. Zillow, Inc. (IPR2013-00034), involving US Pat. No. 7,970,674.

The ‘674 patent is directed to the field of electronic commerce techniques related to real estate. The ‘674 patent discloses an approach where valuing homes is responsive to owner input, allegedly resulting in a more accurate, inexpensive, and convenient valuation.

The Board first addressed a claim construction dispute between the parties involving the term “user knowledge about the distinguished home.” Patent Owner advocated a narrower construction limited to “the owner or a person with equivalent knowledge to the owner,” apparently trying to avoid prior art references directed more towards agents. The Board was not persuaded.  Relying primarily on the specification, the Board determined that such a “user” could be any person “knowledgeable about the distinguished home” and was not limited to the owner.  Order at 9-10.  Relatedly, the Board went on to construe “owner of a home” and “new geographically-specific home valuation model” based primarily on the specification of the ‘674 patent.

Turning to the specific grounds of challenge, the Board first granted two anticipation grounds after rejecting Patent Owner’s arguments that one or more limitations was missing. A related obviousness challenge, based on the 102 reference in combination with an additional reference, was denied as redundant. Order at 13. It will be interesting to see what will happen if the Board is later convinced that the anticipating reference does not contain all claim limitations.  Given the Board’s reluctance to date to grant any rehearing request, maybe this possibility is extremely remote.

The Board next proceeded through analysis of the remaining obviousness challenge grounds. In some instances the Board found a reasonable likelihood of prevailing, but other times the Board was unpersuaded because of opposing arguments presented by Patent Owner in its Preliminary Response.  For example, for certain of the challenged claims, Patent Owner successfully argued that Patent Challenger’s combination of references still failed to disclose an element of the challenged claim. Order at 18-19.  On the flip side, grounds for other claims were granted where the Patent Owner “did not set forth any reason as to why [Patent Challenger’s] arguments were unpersuasive.” Order at 23, 25.

After completing its detailed obviousness analysis, the Board granted trial on some, but not all of the challenged patent claims. For some claims, the Board found Patent Challenger’s arguments to be more persuasive, but for other claims, Patent Owner’s silence in its Preliminary Response was deafening. Indeed, Patent Owner’s strong arguments that persuaded the Board to not grant some grounds seemed detrimental to Patent Owner’s interests with regard to other grounds.  That is to say, the Board treated Patent Owner’s silence as a kind of acquiescence to Patent Challenger’s arguments.

34 for 36: Second Petition for Inter Partes Review Denied!

In an IPR miracle, Denso Corporation was unsuccessful iStock_000013618133XSmallin forcing any of 17 challenged claims of a Beacon Navigation patent into an inter partes review trial, marking just the second time that a petition seeking inter partes review was denied. The case is styled Denso Corporation v. Beacon Navigation GmbH (IPR2013-00027), involving US Pat. No. 5,862,511. The Board denied all 60 challenge grounds put forth by the Patent Challenger for failure to demonstrate a reasonable likelihood that one or more of the challenged claims is unpatentable.

The ‘511 patent describes a navigation system and method in which a GPS-derived velocity vector including speed and heading components is used for propagating a “previous position” to a “current position.” If a GPS-derived velocity vector is not available, speed and heading information derived from an orthogonal axes accelerometer and other sensors is used to propagate vehicle position. Because the GPS information is almost always available, less reliance on accelerometers is needed, thereby allowing the use of less expensive accelerometers. The accelerometers are repeatedly calibrated using the GPS-derived velocity data.

After briefly discussing related matters and claim construction, the Board proceeded to analyze each of Patent Challenger’s grounds for challenge. To that end, the Board picked apart each of the 102 grounds propounded by Patent Challenger, finding that, in one way or another, the cited references failed to disclose one or more limitations from the challenged claims.  For example, one reference (Odagawa) failed to disclose the limitation of correcting the GPS-derived velocity vector by rotating it in accordance with map data or otherwise. Order at 9.  Similarly, another reference (Klein) failed to disclose that the velocity vector heading must be corrected by reference to map data before that velocity vector is used to propagate a position to a current position. Lastly, a third reference (Anderson) failed to describe “correcting the heading portion of a velocity vector at all, much less using the corrected velocity vector to proagate a previous position to a current position.”  Order at 17.  Other purported 102 references were similarly found lacking one element or another from the challenged claims.

Interestingly, the Board also commented on an obviousness challenge made by Patent Challenger, in connection with the Anderson reference, that contained a “catch all” statement.  Order at 17-18.  Specifically, Patent Challenger tried to assert that “any claim element…not found in the references…would be predictable and obvious to one of ordinary skill in the area of navigation systems.”  But, the Board found this summary argument unpersuasive. Patent Challenger must carry the burden of establishing a reason for unpatentability sufficient to meet the threshold for instituting a trial.  Such “catch all” statements are insufficient to meet the threshold for instituting a trial.  Order at 18.

In the end, this petition failed, where so many others succeeded, because Patent Challenger did not adequately indicate where each and every limitation of the challenged claims was contained in the multitude of 102 references.  Further, Patent Challenger did not put forth sufficient evidence to support its 103 contentions.  As a result, the Board denied all 55 anticipation challenge grounds and all 5 obviousness challenge grounds.

32 for 33: PTAB Again Allows Re-Argument of Grounds Denied in Earlier Reexamination

iStock_000019792592XSmallThe PTAB continued its trend of not providing any deference in an inter partes review to previous actions by the Patent Office with respect to a previously-challenged patent in a case styled Vestcom Int’l, Inc. v. Grandville Printing Co. (IPR2013-00031), involving US Pat. No. 8,020,765. Three of the fourteen challenge grounds were granted, with the Board finding the other 11 grounds to be redundant.

The invention of the ‘765 patent relates to a method of printing, distributing, and placing price tags and point-of-purchase signs for use in retail store shelves and displays. According to the ‘765 patent, the invention is particularly useful for “just-in-time” printing, delivery of price tags with minimal lead times, and faster price tag changes at stores – all while reducing labor costs.

As has become its pattern, the Board first construed two key claim limitations.  First, the Board adopted Patent Challenger’s definition for “digital press,” after noting that Patent Owner did not contest the construction.  Second, the Board, sua sponte, construed the term “just-in-time,” finding that its meaning “is not apparent to us.”  Order at 13.  In construing that term, the Board first noted that the ‘765 patent did not contain an explicit or special definition of “just-in-time.”  As such, the Board turned to a dictionary definition, citing to an online resource (xreferplus.com).  Order at 15.

After construing the two claim terms, the Board proceeded to analyze the Patent Owner’s estoppel argument, that Patent Challenger previously filed a request for inter partes reexamination of the ‘765 patent that included 405 proposed grounds of rejection (fourteen of which were identical to those contained in the present petition for inter partes review). In the prior reexamination, the PTO issued a Reexamination Order denying the petition for inter partes reexamination.  Based on this denial, Patent Owner sought a finding that the present petition for inter partes review should be denied.  The Board disagreed.

First, the Board determined that the previously-codified estoppel provisions of inter partes reexamination (35 USC §317(b)) did not apply to inter partes review. Order at 17. Next, the Board determined that the current version of 35 USC §318(a) did not apply because that section only related to final, written decisions based on a petition for inter partes review, not inter partes reexamination. Order at 17-18. Finally, the Board determined that issue preclusion did not apply because the prior Reexamination Order only addressed a different claim not challenged in the present inter partes review and did not include any substantive analysis or draw any conclusions relative to the claims challenged in the present inter partes review, even though those claims were included in the prior request for inter partes reexamination.  That is, because the specific denial of the reexamination petition only applied the art to claim 1, not the claims challenged here, issue preclusion was inappropriate. Order at 18-19. Therefore, the Board held that Patent Challengers were not estopped from presenting identical grounds for unpatentability.

In the end, the Board granted trial on all thee challenged claims based on three obviousness challenge grounds each involving a combination of at least three prior art references. Important to that analysis was the Board’s rejection of Patent Owner’s argument that there was insufficient rationale to combine the references cited by Patent Challenger. In rejecting this argument, the Board noted that Patent Owner did not provide “credible evidence or arguments concerning any technological difficulties” that would prevent the combination.  Order at 24.  Of course, Patent Owner was unable to put forth expert testimony at this stage of the proceeding.

Lastly, the Board denied an argument that secondary considerations militated against a finding of a reasonable likelihood that one or more claims was unpatentable.  Order at 25.  To that end, the Board found that there was no showing of a nexus between the claimed commercial success and the claimed invention.  To establish commercial success, Patent Owner had to show that the success was “directly attributable” to the claimed features.  Further, Patent Owner needed to address whether other factors, including advertising and promotion, contributed to the commercial success.