The 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.