30 for 31: Prior Art from Original Prosecution Used as a Basis for Institution of Inter Partes Review

iStock_000000202778XSmallThe Patent Trial and Appeal Board continued to give little or no deference to previous decisions by the Patent Office in granting an inter partes review trial in response to a petition filed by Chimei Innolux in a case styled as Chimei Innolux Corp. v. Semiconductor Energy Lab. Co., Ltd. (IPR2013-00038), involving US Pat. No. 7,956,978. Both challenged claims were put into trial based on multiple obviousness grounds.

The ‘978 patent describes LCD devices having two opposing substrates bonded together with a sealing material. The ‘978 patent solves a problem in the prior art by using dummy wiring sections which are nearly equal in height to the other conductive lines to render the seal and consequent gap more uniform.

The Board first addressed two statutory threshold issues. The Patent Owner argued that the petition for inter partes review was improper under section 325(d) because the PTO Examiner previously considered the same prior art references during prosecution of the application leading to the ‘978 patent. The Board rejected this argument because there was no showing of substantially the same arguments, beyond simply using the same prior art references. Order at 6. The Board noted new evidence not considered during the prior examination, including the Patent Challenger’s expert declaration. In general, therefore, a Patent Challenger’s expert declaration, alone, seems like enough to allow prior art previously considered during examination to be used as a basis for inter partes review.

The Board next addressed the Patent Owner’s contentions that the petition should be denied due to a failure to identify all real parties-in-interest, because not all co-defendants in pending litigation were listed. Despite the fact that all co-defendants represented to the district court that they all “participated in filing the instant Petition” and agreed to be bound by this inter partes review, the Board found that insufficient evidence was set forth by Patent Owner to prove that the co-defendants not listed as real parties-in-interest had control over the IPR proceeding. Order at 7.

The Board then proceed through a fairly straight-forward obviousness analysis, failing to find Patent Owner’s objections to the grounds asserted in the petition to be persuasive.  As such, the Board granted an IPR trial on two different obviousness grounds using references cited in the original examination of the application leading to the ‘978 patent, as additionally supported by Patent Challenger’s expert declaration. Maintaining a developing trend in IPR practice, the Board is providing almost no deference to the Patent Office’s previous decisions relating to the patent-in-suit, leaving open the potential for Patent Challengers to re-use prior art references from the original examination.

27 for 28: Expert Witness Provides Deciding Testimony in Grant of Two Inter Partes Review Trials

eyedroppersApotex has successfully forced two Alcon Pharmaceuticals patents into inter partes review trials (HERE and HERE), in cases styled as Apotex Inc. v. Alcon Pharmaceuticals, Ltd. (IPR2013-00012 and IPR2013-00015), involving US Patent Nos. 6,716,830 and 7,671,070. In each case, all challenged claims were put into trial.

The technology involved in the ‘830 and ‘070 patents involves compositions containing a “new” class of antibiotics (e.g., moxifloxacin) to treat ophthalmic, otic, and nasal conditions, or for prophylactic use, by topically applying the compositions to affected tissues. The claims at issue were specifically directed to ophthalmic conditions.

Both decisions are based on the same underlying facts and arguments and are, as such, treated together herein.

The most relevant claim construction dispute between the parties was the term “pharmaceutically acceptable vehicle.” Rejecting Patent Challenger’s construction, the Board determined the broadest reasonable interpretation to be a vehicle that is acceptable for use as a topical ophthalmic pharmaceutical composition, i.e., any excipient(s) that can be safely used in the eye, such as saline.  Order at 7.

The Patent Challenger’s expert witness declaration played a key role in the these cases, as the Board cited to the declaration on more than one occasion to explain the understanding of a person of ordinary skill in the art, for both discussion of the prior art references and the obviousness analysis. It is also interesting to review the qualifications that the Board found persuasive in the Expert’s declaration, including educational background, scientific investigations in the relevant art, publication history, etc.  Order at 8, n.2.  Based on the opinions proffered by the expert, the Board concluded that Patent Challenger demonstrated a reasonable likelihood of prevailing that at least claim 1 was obvious.

In so concluding, the Board discarded Patent Owner’s arguments that the prior art references taught away from using moxifloxacin topical ophthalmic compositions, including an argument that moxifloxacin presented a risk of toxicity. The Board again found Patent Challenger’s expert opinion to be credible; specifically, that moxifloxacin was safe and effective for ophthalmic use and the prior art as a whole would not have discouraged a skilled artisan from producing a topical ophthalmic moxifloxacin pharmaceutical composition. Patent Owner also tried to argue additional objective indicia of nonobviousness, including unexpected results, meeting a long-felt need, commercial success, and skepticism by experts, but the Board was not persuaded by any of those arguments.

The Board did however deny Patent Challenger’s anticipation challenge because the prior art range of 0.5 to 95 wt. % was sufficiently different than the 0.1-1.0 wt. % limitation of the claims of the ‘830 and ‘070 patents. The teachings of the prior art were also not expressly tied together in a meaningful manner, because the reference did not specifically relate the formulation concentration to moxifloxacin or relate its teaching to ophthalmological formulations. The Board cited Finisaar Corp. v. DirecTV Group, Inc., 523 F.3d 1323 (Fed. Cir. 2008), that while a prior art reference does not necessarily have to provide an example of the claimed invention, the teachings in the reference relied upon by Patent Challenger were unconnected to the extent that they did not anticipate the claims of the ‘080 and ‘071 patents.

In summary, the Board granted both trials on all claims based on one challenge ground of obviousness. Interestingly, the board denied all other obviousness challenge grounds as cumulative without specifically addressing them, furthering the debate about how these ‘cumulative’ grounds will be treated in the future if the granted grounds prove unsuccessful.

Most Cited Cases in PTAB Decisions to Initiate Inter Partes Review Trial

Seven months into inter partes review practice, we take a quick look at those cases most often cited by the PTAB in their decisions to initiate (or not initiate) an inter partes review trial.  Not surprisingly, Phillips and KSR lead charge given their strong bearing on claim construction and obviousness issues, respectively.  The other cases will provide a helpful reference when considering what authority to cite to the Board.



Case Citation

Number of Times Cited


Phillips v. AWH Corp., 415 F.3d 1303, 1312, 1313, 1314, 1317 (Fed. Cir. 2005)



KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406, 416, 417, 418, 420, 421 (2007)



CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002)



Renishaw PLC v. Marposs Societa per Azioni, 158 F.3d 1243, 1249, 1250 (Fed. Cir. 1998)



Multiform Desiccants, Inc. v. Medzam, Ltd., 133 F.3d 1473, 1477 (Fed. Cir. 1998)



Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987)



York Prods., Inc. v. Central Tractor Farm & Family Ctr., 99 F.3d 1568, 1572 (Fed. Cir. 1996)



Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 17-18 (1966)



In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994) 



Advanced Display Sys., Inc. v. Kent State Univ., 212 F.3d 1272, 1282 (Fed. Cir. 2000)



Liberty Mutual Ins. Co. v. Progressive Casualty Ins. Co., CBM-2012-00003



Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369-70 (Fed. Cir. 2008)



In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993)


23 for 24: PTAB Provides Guidance on Petition Drafting in Instituting 23rd Inter Partes Review Trial

Denso and Clarion were successful in getting half of the claims of a patent owned by Beacon Navigation into an inter partes review trial, in the case styled as Denso Corp. and Clarion Co. Ltd. v. Beacon Navigation GmbH, IPR2013-00026, involving US Patent No. 6,029,111. The Board granted the IPR trial for 14 of the 28 challenged claims based on 4 of the 8 references presented by the Patent Challenger. The remaining claims were not placed into the IPR trial, marking one of the relatively few decisions in which an IPR trial was only granted for some of the challenged claims. It is also an unusual case because the Patent Challenger only challenged the ‘111 patent on anticipation grounds, with no obviousness grounds at all.

The subject matter of the ‘111 patent describes a navigation system in which information from a GPS is used to obtain velocity vectors, which include speed and heading components, for propagating or “dead reckoning” the vehicle position from a previous position to a current position. The current position is calculated by adding displacements obtained from the GPS velocities to the previous position. GPS position data alone is not accurate enough for certain applications, but GPS velocities are much more accurate than the position data and can be sued to propagate a known solution forward and be more accurate over time then the GPS position solution.

The Board first noted that ordinary and customary meaning would be used for all claim terms because Patent Challenger did not provide any proposed constructions.  In so holding, the Board softly criticized the petition, pointing out that the Petition relied largely upon claim charts, but lacked sufficient discussion and explanation of the unpatentability arguments upon which Patent Challenger relied:

Relying on claim charts with little or no supporting discussion or explanation assumes that the anticipation contentions are self-evident from them.  That is usually not the case, especially where, as here, the technology is complex.  That is why our rules state: “The Board may exclude or give no weight to the evidence where a party has failed to state its relevance or to identify specific portions of the evidence that support the challenge.”  37 C.F.R. § 42.104(b)(5).

The Board’s comment certainly provides a caution for patent challengers, especially in complex technology areas.  While page limitations can be a concern, it is not advisable to simply present unpatentability contentions in claim chart format. Instead, the claim chart should be accompanied by detailed explanation of the arguments contained in the claim chart, including the positions taken by Patent Challenger’s expert.

Moving beyond the claim construction and drafting issues, the Board ultimately decided that some of the proposed anticipation grounds met the reasonable likelihood standard.  In this regard, the Board made several potentially noteworthy conclusions, indicating the types of arguments and evidence the Board may be willing to rely on in deciding anticipation challenge grounds. As to claim 1, the Board took note of a “well-known calculus/physics principle” that integrating velocity yields a position displacement. Order at 19. As to claim 2, the Board found that even though “east” and “north” displacements were not explicitly recited in the anticipating reference, they were inherently disclosed because a velocity vector can have any direction. As to claim 6, the Board cited to a declaration submitted by the Patent Challenger in determining that there was a reasonable likelihood of prevailing for that claim. Order at 20-21.

The Board continued to stress the importance of additional argument beyond claim charts by finding no reasonable likelihood of prevailing as to claim 1 under one particular reference, “in the absence of any analysis from Petitioners above and beyond what is set forth in the claim charts.” Order at 29. There was one instance, however, in which the Board conducted their own review of a translated foreign reference which was only mentioned in the petition in claim charts that generally referred to certain pages of the foreign reference without any explanation. Order at 42. The Board did find a reasonable likelihood of prevailing on some of the claims, but not all, based on the foreign reference.

In the end, the IPR trial was instituted for only half of the claims, using only half of the asserted references for those claims. Interestingly, the Board did not deny any grounds based on redundancy, but instead made specific findings for every ground for each reference as to whether all elements of the claim were disclosed in the reference. The Board actually granted four different grounds based on four different anticipating references for many of the claims which were put into the IPR trial.

Stay tuned….while the faulty petition may have been the cause of numerous grounds for unpatentability being denied, the Board noted in its decision that there are 18 pending district court litigation matters relating to the patent-at-issue.  Guidance from the Board may lead one or more of the other defendants to retry the denied grounds.

20 for 21: First of Three Micron Tech Inter Partes Review Trials Instituted

iStock_000011002999XSmallThe PTAB’s pace, in its decisions relating to the institution of inter partes review trials, is picking up steam…and that is not good news for patent owners. The first of three decisions instituting an inter partes review trial based on a petition brought by Micron Technology was granted in the IPR styled Micron Technology, Inc. v. The Board of Trustees of the University of Illinois (IPR2013-00005), involving US Patent No. 6,444,533. The Board instituted the trial on all 8 claims of the patent based on four of 24 proposed grounds.

As described in more detail below, this decision by the PTAB touches upon issues relating to: 1) entering a priority document for the patent-at-issue as an exhibit; 2) the inclusion of witness testimony from the prosecution of the patent; 3) art previously considered by the Patent Office during examination; 4) specific claim construction issues; 5) teaching away; and 6) unexpected results.

The subject matter of the ‘533 patent involves methods of treating a semiconductor device by passivating (or annealing) the device with deuterium, an isotope of hydrogen. It is interesting to note that the Board commented upon the lack of evidence provided by Patent Owner regarding the priority date of the patent-at-issue. It is unclear if the Board is suggesting that is a requirement in the future, but it bears monitoring. Order at 4, n.4.

Patent Challenger offered numerous prior art references, including testimony that was originally entered in the prosecution record and art that was previously considered by the Office during prosecution of the subject patent. Patent Owner tried to keep that old art out of the IPR proceeding, pursuant to 35 USC §325(d), but the Board declined that request: “we are not required by statute to reject a petition based upon the fact that certain arguments or art were previously considered by the Office…” The Board found that the record in this proceeding differed from prosecution, given that the art was considered here in view of an expert declaration proffered by Patent Challenger. Is an expert declaration, therefore, the magic elixir that prevents the application of §325(d)?

The Board’s treatment of claim construction offered an interesting recap of the parties positions. At threshold, Patent Challenger included in its position a statement that the claims should be given their broadest reasonable interpretation. Patent Owner responded by suggesting that such a position was improper given that Patent Challenger proffered a different interpretation in litigation and the Trial Practice Rules require that “where a party believes that a specific term has meaning other than its plain meaning, the party should provide a statement identifying a proposed construction of the particular term and where the disclosure supports that meaning.” 77 Fed. Reg. 48764. This is a very interesting argument that may have the potential to force a Patent Challenger to adhere to litigation positions. Despite the creativity of the argument, though, Patent Owner failed to actually include those litigation positions as an exhibit to its Preliminary Response and, as such, the Board could not take them into consideration in its decision. Order at 9-10.

Among the grounds the Board granted was obviousness in view of a single reference. The Board found that the reference lacked one of the steps of the claimed method, but that the testimony of Patent Challenger’s expert provided that missing step. Order at 11. This is certainly a helpful development for patent challengers and underscores the importance of expert declaration testimony.

Lastly, the Board addressed, but ultimately discarded, arguments relating to “teaching away” and “unexpected results” that were proffered by Patent Owner. Regarding teaching away, the Board found the argument unpersuasive because it was at odds with a reading of the entire specification of the prior art. Although one excerpt may have suggested the reference taught away, a more complete reading undercut that position. Order at 13. Regarding unexpected results, the Board again found Patent Owner’s evidence presentation to be lacking. The Preliminary Response “does not cite to the prosecution history of the ‘533 patent in support of [the unexpected results] argument or otherwise direct us to evidence sufficient to show unexpected results.”

In the end, rack up another victory for Patent Challengers as the 20th IPR trial takes flight.

19 for 20: Tire Pressure-Monitoring Patent is 19th Put Into Inter Partes Review Trial

OLYMPUS DIGITAL CAMERASchrader-Bridgeport was successful in forcing a patent owned by Continental Automotive Systems US into an inter partes review trial, in the case styled as Schrader-Bridgeport International, Inc. v. Continental Automotive Sys. US, Inc. (IPR2013-00014), involving US Patent No. 6,998,973.  The Board granted the IPR trial based on all 10 challenged claims and on one of 9 grounds for challenge.

The subject matter of the ‘973 patent involves a data transmission method for a tire-pressure monitoring system of a vehicle.  More particularly, the method prevents data collisions from the various wheel units of an automobile through the use of internal clocks in each wheel unit.  The main dispute between the parties involved the last clause of independent claim 1, including the terms “natural time lag” and “used to prevent collisions.”

Starting with the step of claim construction, the Board noted that Patent Challenger’s claim construction of “natural time lag” corresponds to a position taken by Patent Owner in concurrent district court litigation.  That definition, which Patent Owner urged the Board to adopt for purposes of this IPR, comprises “sensors with any amount of imprecision, even lower than +/- 1%, creates a sufficient ‘natural lag’ to be covered by the claim.”  Because the Board could not discern how this definition aligned with a litigation position, or why the +/- 1% limitation should be included, it found that the proposed construction was overly broad in light of the patent specification.  Instead, the Board looked to the specification and found that one of ordinary skill would have understood that term to mean that tolerance of the clocks is sufficiently poor so as to automatically and randomly induce time shifting of transmission from the clocks.  Order at 8.

Turning to the term “used to prevent collisions,” the Board agreed with the definition proposed by Patent Challenger; namely that the occurrence of collisions is reduced. All other terms in the challenged claims were given their ordinary and customary meanings.  Id.

Having construed the above-two terms, the Board turned to the issue of anticipation, noting that Patent Challenger’s arguments relied upon implicit disclosures.  That is, Patent Challenger relied upon inherency.  Order at 10.  With regard to the first reference at issue, the Board found that Patent Challenger’s inherency argument neglected to consider the entirety of the teachings of the reference.  In light of that more complete analysis, the disclosure would not necessarily function in a manner consistent with the claimed invention.  MEHL/Biophile International Corp. v. Milgraum, 192 F.3d 1362, 1365 (Fed. Cir. 1999) (“Inherency” requires that a given fact must necessarily result, and not be established based on mere probability or possibility).  Order at 12.  Relatedly, the Board found that the second reference upon which Patent Challenger asserts under an inherency theory was similarly insupportable.  Order at 13.

The Board was more persuaded, however, by Patent Challenger’s grounds for challenge based on obviousness.  The Board’s analysis overcame Patent Owner’s arguments that the combinations at issue were: 1) based on non-analogous art, 2) taught against the combination, and 3) there was “no reason” to combine.  With respect to the non-analogous art argument, the Board found that, while the art may not have been in the same field of endeavor, the test for whether a reference is analogous could, alternatively, be based on the fact that the reference is reasonably pertinent to the particular problem at issue.  Wyers v. Master Lock Co. 616 F.3d 1231, 1238 (Fed. Cir. 2010).  Order at 17.

The Board also found the “teaching away” argument to be unavailing.  Order at 18.  While the art at issue may recognize a particular preferred benefit, the reference did not criticize, discredit, or otherwise discourage investigation into other viable benefits.  DePuy Spine Inc. v. Medtronic Sofamor Danek, 567 F.3d 1314, 1327 (Fed. Cir. 2009).  Lastly, the board denied that there was “no reason” to combine the teachings of the subject references.  Because the combination constituted implementing known teachings concerning the basic technology at issue, this reasoning by Patent Owner was not given weight.  Order at 18-19.

In the end, the IPR trial was instituted based on a number of obviousness grounds.  Other grounds, deemed redundant to the above-discussed grounds, were denied.  Interestingly, the Board did provide additional background on this point, as compared to earlier decisions.  Specifically, the Board suggested that, if it did not succeed on the grounds put into the trial, Patent Challenger would likely fail with regard to the other grounds, as well.

16 for 17: First of Three Inter Partes Trials Instituted on Petitions from Illumina

In the first of three petitions for inter partes review brought by Illumina, Inc. against Columbia University was granted in the IPR styled as Illumina Inc. v. The Trustees of Columbia University in the City of New York (IPR2012-00006), involving US Patent No. 7,713,698. The PTAB instituted the IPR trial against all 11 claims based on three of 22 proposed grounds for unpatentability.

The subject matter of the ‘698 patent involves sequencing DNA by incorporating a nucleotide analogue into a newly synthesized strand of DNA, and then detecting the identity of the incorporated analogue. Terms from the patent that were key to the Board’s analysis were “attached”/”immobilized and “deaza-substituted.”

The Board first considered the claim construction of the terms “attached” (claim 1) and “immobilized” (claim 11). While no explicit definition was provided for those terms in the patent, the Board looked to the specification and a dictionary (specifically, http://www.thefreedictionary.com) to determine, first, that the terms should be given the same meaning, and second, that such meaning was “that the DNA, itself, is affixed to the solid surface without intervening structures.” Order at 8.

Next, the Board turned to the issue of anticipation involving several prior art references. With regard to those references, Patent Challenger relied on the fact that those patents incorporated by reference another prior art patent that disclosed a relevant claim term (i.e., “deaza-substituted”). On this issue, the Board cited the test articulated in Advanced Display Sys., Inc. v. Kent State Univ., 212 F.3d 1272, 1282 (Fed. Cir. 2012), wherein it was held that “incorporation by reference provides a method for integrating material from various documents into a host document…by citing such material in a manner that makes clear that the material is effectively part of the host document as if it were explicitly contained therein.” Id. Further limiting what can be deemed effectively incorporated by reference, the Advanced Display decision held that “to incorporate material by reference, the host document must identify with detailed particularity what specific material it incorporates and clearly indicate where that material is found in the various documents.” Id. Because the primary references did not clearly indicate that the secondary art was being referenced for its teaching of the claim limitation at issue, the Board found that none of the grounds for unpatentability based on §102 met the standard to initiate an inter partes review trial.

As part of that decision, it is interesting to note that the Board discounted the testimony of Patent Challenger’s expert witness, finding that the expert did not provide a factual basis for his testimony as to why the teaching from the secondary reference would have been recognized by one of skill in the art. Order at 13. Further, the Board also discounted one of the primary reference’s statements that all documents referenced in the specification were “incorporated by reference.” Such a general statement, per the Board, “does not direct the ordinary skilled worker to specific disclosure [in the secondary reference].” Id.

Having discarded Patent Challenger’s §102 grounds, the Board next turned to several grounds based on §103. The Board’s analysis took on a traditional John Deere structure: (a) the scope and content of the prior art, (b) differences between the prior art and claimed invention, (c) level of ordinary skill in the art, and (d) evidence of secondary considerations. Order at 19.

The Board’s analysis then distilled the prior art down to two basic points: 1) that DNA sequencing by synthesis was known in the art, and 2) that deaza-substituted nucleotides had been used in DNA sequencing prior to the priority date of the ‘698 patent. Order at 23. Having established this distillation of the art, the Board then identified reasons why it would have been obvious to combine the DNA sequencing method with deaza-substituted nucleotides, to render the two independent claims obvious. Using this rationale, the Board ultimately granted the IPR trial on four separate §103 grounds.

It is worth remarking that the rationales being employed to institute IPR trials by various panels of the Board are disparate and, at times, contradictory. Given we are in the infancy stages of these proceedings, this is perhaps to be expected.  Over time, it seems likely that the Board’s decisions will synthesize into more uniform Orders, but it is helpful to recognize who is your Administrative Patent Judge.

15 for 16: Intellectual Ventures Inter Partes Review Trial Initiated

iStock_000002261448XSmallThe PTAB provided another victory for a patent challenger, as Xilinx successfully forced an Intellectual Ventures patent into an inter partes review trial, in the case styled as Xilinx, Inc. v. Intellectual Ventures I, LLC (IPR2013-00029), involving US Patent No. 5,632,545. Xilinx challenged 3 claims in the ‘545 patent, based upon four grounds of unpatentability.

The technology of the ‘545 patent relates to a color video projector system that uses three separate light sources that are combined to create a single beam that provides a full-color video display. The two claim terms that were central to the Board’s decision are: “Light-Shutter Matrix System” and “Video Controller Adapted for Controlling the Light-Shutter Matrices.”

Analyzing first the PTAB’s claim construction of “Light-Shutter Matrix System,” the Board noted at the outset that Patent Owner’s proposed interpretation was based upon: a) dictionary definitions of the terms “shutter” and “matrix”; and b) the disclosure of the term “shutter” from another patent’s disclosure. Based upon these sources, Patent Owner proposed a definition of “a two-dimensional array of light-shutter elements, in which each element can be used to shut or block out portions of a beam of light.”

The Board disagreed with Patent Owner’s compilation of dictionary definitions, however, and came to its own formulation of a claim construction for the Light-Shutter Matrices. Interestingly, in doing so, the Board relied upon its own dictionary definitions, but used those definitions to form a more broad definition of the subject term. The Board disagreed with Patent Owner’s proposed construction for two reasons. First, the definition relied upon by Patent Owner for “shutter” was directed to camera technology, not video projector systems. Order at 8. Second, Patent Owner’s definition from a prior art reference was deemed to be specific to a particular shutter, and not more generically described. As such, the disclosure was not indicative of how a person skilled in the art would understand the term generically. Order at 9.

The Board then turned to its construction of the “video controller” limitation. Though Patent Challenger did not offer a proposed construction (relying on the “broadest reasonable construction”), the Board did not accept Patent Owner’s specific proposal. That proposal, based on two other patents, was deemed not appropriate in this case. More particularly, the Board saw no need to look to other patents, especially since those patents did not use the full phrase of the claim, where the term “’video controller’ is a generic term of art.” Order at 10. As one would expect, the Board’s adopted construction was broader than that proposed by Patent Owner.

In the end, the Board initiated the IPR trial based upon two of the four proposed grounds. This is a decision that reinforces the Patent Challenger advantage of inter partes review practice, which relies on the broadest reasonable interpretation of the contested claim terms. Relying on that broad construction here, the Board read the subject claim terms onto prior art that, at first glance, is quite a bit different than the preferred embodiment of the ‘545 patent. As such, while a claim amendment might save the patentability of the claim, Patent Challenger may have successfully forced a narrowing of the subject claims (and reduced past damages?).

Clerical Mistakes in Petition Can Be Fixed Under Certain Circumstances

Despite its mostly hard-line stance on compliance with the trial practice rules, the Board recently saved an administrative assistant who confused the filing of two petitions seeking inter partes review and jumbled several exhibits. The issue came to the fore in ABB Inc. v. Roy-G-Biv Corp. (IPR2013-00063) because Patent Owner sought to use the mistake as a way to require Patent Challenger to move forward with a defective petition. The Board did not agree, allowing correction of the petition pursuant to 37 CFR §104(c).

[pullquote align=”left|center|right” textalign=”left|center|right” width=”30%”]37 CFR §104(c) – A motion may be filed that seeks to correct a clerical or typographical mistake in the petition. The grant of such a motion does not change the filing date of the petition.[/pullquote]

The Order itself comes to a reasonable and predictable conclusion, but in the meantime tells the story of an unfortunate series of events that caused erroneous filings with the PTAB and, ultimately, required three separate declarations to fix.

What is worthwhile noting, for future reference, however, is that the rules take into account the occasional need for correction of certain clerical errors. To that end, the Board found that 37 CFR §104(c) “is remedial in nature and is therefore entitled to a liberal interpretation.” As such, the Board rejected Patent Owner’s arguments, finding that uploading of incorrect documents was, indeed, a clerical error, and Patent Owner would have sufficient time to provide its preliminary response, among other rejected arguments.

So the Board has a heart after all!  Parties cannot rely on a get out of jail card often, but the reasonableness of the Board’s stance in this case reflects well that minor, inconsequential errors will not lead to the wholesale destruction of a party’s case.

14 for 15: Another Inter Partes Review Trial Instituted

SONY DSCSuddenly, the 92% rate at which the Patent Office granted petitions seeking inter partes reexamination seems kind of low.  While the standard for initiating an inter partes review is ostensibly higher (reasonable likelihood) than the standard that was required to institute an inter partes reexamination (substantial new question), the rate at which inter partes review trials are being instituted does not reflect any such difference.  The Board instituted the fourteenth out of fifteen trials in Ranbaxy Labs, Ltd. v. Vertex Pharm., Inc. (IPR2013-00024), involving US Patent No. 5,436,989.  The Board initiated this trial based on two of the four proposed grounds and against all twelve of the challenged claims.

The subject matter of the ‘989 patent includes prodrugs of HIV aspartyl protease inhibitors, including pharmaceutical compositions and methods of treatment.  In general, the advantages of the prodrugs of the ‘989 patent included higher aqueous solubility, higher oral bioavailability, and decreased pill burden/increased patient compliance.

The first chemical trial instituted by the Board, Ranbaxy also is an outlier because it is one of the few decisions by the Board instituting a trial wherein claim construction was not a central part of the Board’s decision.  Perhaps the Patent Owner was simply saving a claim construction dispute for later in the proceeding, but the Board remarked that “the terms recited in the claims of the ‘989 Patent do not appear to be in dispute.”  Order at 4.

Instead, the Board’s decision turned on the issue of whether the claimed chemical compound was obvious, and used the test for obviousness in a chemical case articulated in Otsuka Pharma. Co., Ltd. v. Sandoz, Inc., 678 F.3d 1280, 1292 (Fed. Cir. 2012).  More specifically, the correct inquiry was articulated as “whether the prior art would have supplied one of ordinary skill in the art with a reason or motivation to modify a lead compound to make the claimed compound with a reasonable expectation of success.”  Order at 7.

Starting with the “Reason to Modify” prong of the Otsuka test, the Board undertook a detailed analysis of the state of the art at the time the ‘989 patent was filed and determined that a shortcoming of protease inhibitors, low solubility, was well-known in the art. The Board gained this perspective from a review of the art of record in this inter partes review.  Because one of the prior art references taught the addition of a solubilizing group known to improve solubility of a low solubility compound, the Board found sufficient “reason to modify.”

Turning to the “Reasonable Expectation of Success” prong, the Board found that the prior art discloses a prodrug similar to the claimed compound.  Further, the Board cited to the ‘989 patent description to support its finding that there was merely insignificant differences between the prior art and claimed methods.  As such, the Board found that the similar structure and disclosure of similar solubility problems associated with that structure would have provided a reasonable expectation of success in improving solubility using the methods taught in the prior art.  Order at 13.

The Board relied upon Patent Challenger’s expert’s testimony in coming to its conclusions.  It being improper, of course, for Patent Owner to introduce any counter-testimony at this stage, there was no evidence to dispute the expert’s conclusion.  Patent Owner’s day, in that regard, will come.  In any event, the two Otsuka prongs having been met, the Board instituted the trial against all challenged claims.

Finally, it is worth noting an interesting point raised by the Board regarding the qualifications of Patent Challenger’s expert.  Specifically, the Board stated that “Patent Owner had not directed us to any reason to doubt Dr. Fisher’s qualifications to testify as an expert in the field of HIV aspartyl protease inhibitors.”  Order at 6.  The remark is interesting because the Board has previously shown a reluctance to consider evidentiary issues at this stage of the proceeding and because an expert’s qualifications are not among the items listed in the Trial Practice Guide as proper subject of a Patent Owner Preliminary Response.