Tag Archives: inter partes review

Overwhelming Prior Art Makes Board’s Job Easy in Grant of IPR Trial

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In a concise decision, for a case involving 28 alleged grounds of unpatentability, Berk-Tek was successful in getting all 21 challenged claims of a Belden patent into an inter partes review trial in a case styled as Berk-Tek, Inc. v. Belden, Inc. (IPR2013-00069), involving U.S. Pat. No. 7,663,061.  Patent Owner did not file a preliminary patent owner response.

The ‘061 patent relates to a high performance data cable using twisted pairs of conductors. Specifically, the invention relates to a cable with an interior support around which the twisted pairs are disposed.

Patent Challenger asserted that the challenged claims were unpatentable as obvious over 28 combinations of references and anticipated by two references. One reference in particular, however, formed the basis of many of the proposed grounds for challenge, and was the focus of the Board in its decision.  Among the interesting findings of the Board was the logical rationale surrounding a limitation requiring an absence of an electrically conductive shield in the jacket of the cable.  The prior art reference at issue did not disclose any such shielding and, thus, the non-disclosure of such a shield indicated the absence of a shield.  Order at 11.  The prior art, therefore, met the subject limitation of the challenged claims.

The Board also had no trouble finding that a range of thicknesses set forth in a prior art reference (0.27-0.43 inches) was more than sufficient to disclose the claimed range of 0.300-0.400 inches.  The primary reference did not provide any diameter dimensions, but a secondary reference provided a range that encompassed the claimed range, and also provided a motivation to combine – that in the art of telecommunication cables, the outer diameter is variable and desirably minimized.  Order at 13.

In the end, the Board granted the inter partes review trial based on 3 of the 28 grounds – finding the remaining grounds redundant to those included in the trial.

1 Year of Inter Partes Review…By the Numbers

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The 1 year anniversary of Inter Partes Review proceedings passed two days ago, and Harness Dickey has the most up to date information on trends and statistics from that first year.  Click HERE for our 1 Year Report on Inter Partes Review practice.

It is clear that the most prominent headline regarding the America Invents Act is how wildly popular inter partes review proceedings have become. Praised for its efficiency, effectiveness, and low cost, as compared to district court litigation, the patent community is flocking to the Patent Office to challenge troublesome patents.  To that end, in the first year of IPR practice, 485 petitions seeking inter partes review have been filed.  Consider the face of patent litigation changed forever, and Patent Office litigation here to stay.  Email us at IPR-PGR@hdp.com with any questions or comments about, or would like a hard copy of, our quarterly report.

Board’s Claim Construction Limited to What it Needed To Initiate IPR Trial

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In an interesting decision, the Board limited its claim construction analysis to whether a compound found in the prior art was covered by the claims, as opposed to coming to a determination of what were the full metes and bounds of the claim limitation’s meaning, in instituting an inter partes review in St. Jude Medical, Cardiology Division, Inc. v. The Board of Regents of the Univ. of Michigan(IPR2013-00041), involving U.S. Pat. No. 5,746,775.  All six challenged claims were put into the trial and the University did not file a preliminary patent owner response.

The ‘775 patent relates to methods of exposing biomaterial for implantation in a living being to an alcohol to inhibit in vivo calcification. More precisely, the invention relates to contacting the biomaterial with a greater than 50% by volume solution of an alcohol for a period of time sufficient to render the tissue resistant to in vivo calcification. The solution may optionally contain additional anti-calcification agents, such as a soluble salt of a metallic cation like Al+3 or Fe+3.

In a practical claim construction ruling, the Board determined that the claim limitation “C1-C3 aliphatic alcohol” covered glycerol, because that is the alcohol that is disclosed in the prior art at issue.  In coming to its decision, the Board looked to dictionary definition of “alcohol,” as well as the specification of the ’775 patent.

The Board followed the brief claim construction analysis by determining the effective filing date of the ‘775 patent to determine the whether a reference cited by Patent Challenger qualified as prior art. Patent Challenger argued that the ‘775 patent, a continuation-in-part, was not entitled to its ancestor’s filing date because the earlier-filed application did not provide adequate written description support for the limitations in the challenged claims. The Board agreed with Patent Challenger inadequate support was provided in the ancestor patent documents to the ’775 patent for at least two limitations of the subject claims.  As such, the ‘775 patent was entitled to only its own filing date as a priority date, thereby qualifying the reference in question as prior art.

In view of these findings, the Board had the ammunition it needed to grant Patent Challenger’s Petition for inter partes review as to all 6 challenged claims in the ‘775 patent based on obviousness grounds.

Detailed Means-Plus-Function Analysis Underlies Board’s Decision to Institute Six Related IPR Trials

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Six PersonalWeb Technologies patents were thrown into inter partes review trials by EMC Corporation in cases styled as EMC Corp. v. PersonalWeb Tech., LLC (IPR2013-00082 through IPR2013-00087), involving U.S. Pat. Nos. 5,978,791; 6,415,280; 7,945,544; 7,945,539; 7,949,662; and 8,001,096.

The six patents each relate to a data processing system that identifies data items, such as data files or records, by using an identifier which depends on all of the data in the data item and only on the data in the data item. This implies that the identity of a data item is said to be independent of its name, origin, location, or address – a feature that is useful in identifying and subsequently eliminating duplicate copies of data items. The system involves having a “True File registry,” into which all data items are assimilated, with duplicates being eliminated.

After describing the cited art in the first case of the series, the Board began in all six cases with the customary claim construction analysis. Of note in the Board’s ruling was its construction of “data” and “data item.”  Relying on CAE Screenplates Inc. v. Heinrich Fiedler GmbH & Co. KG, 224 F.3d 1308, 1317 (Fed. Cir. 2000), the Board noted that, “[i]n the absence of evidence to the contrary, we must presume that the use of different terms in the claims connotes different meanings.”  See, e.g., 82 Order at 15.

Also of note was the Board’s treatment of the means-plus-function claim language from the subject claims. In particular, the Board found that “[t]he corresponding structure of a means-plus-function limitation…must be more than simply a general-purpose computer or microprocessor to avoid pure functional claiming.”  The Board then conducted a detailed analysis of the specification to determine what structure corresponded to the claimed function.

Finally, in a situation common to the related cases, the Board embarked on a lengthy discussion as to whether some of the prior art references cited by Patent Challenger were “printed publications” under 35 U.S.C. §102(b). For example, Patent Owner argued that one of the references was not a printed publication because there was no evidence to indicate that it could have been located prior to the critical date.  See, e.g., 84 Order at 18.  The Board did not agree, noting that whether a given reference is a printed publication involves a case-by-case inquiry into the facts and circumstances surrounding the reference’s disclosure to members of the public.  Id. at 19.  In this case, because the title page of the reference clearly showed that the reference was posted on a publicly accessible site well known to those interested in the art prior to the critical date, the reference is to be considered a printed publication.  The Board distinguished this type of factual scenario – where the reference indicated when it was created and publicly disseminated – versus the scenario presented in Synopsis, Inc. v. Mentor Graphics Corp., wherein a brochure, without any such indication of public availability, was at issue.

In the end, the Board granted all six of Patent Challenger’s petitions for inter partes review as to all challenged claims based on extensive obviousness and anticipation grounds.

Testing that Proved Inherent Properties of Prior Art Accepted by Board

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

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

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

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

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

Ex post facto Evidence

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

Reason to Combine

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

Reasonable Expectation of Success

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

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

Obtaining Additional Discovery in an Inter Partes Review Remains Difficult

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The provision for “additional discovery” in inter partes review proceedings has consistently fallen victim to the PTAB’s steadfast resolve to ensure just, speedy, and inexpensive inter partes review proceedings.  With one notable exception, each request for additional discovery has been denied by the Board, typically with a holding that the movant has failed to meet the requirement that such discovery is “necessary in the interest of justice.”  37 CFR § 42.51(b)(2). Below, we summarize the most recent decisions relating to Motions for Additional Discovery and the key guidance from the Board that can be learned from each such decision.

Motions Denied

Smith & Nephew, Inc. v. Convatec Tech., Inc., IPR2013-00097, Paper 27 (August 21, 2013).  ConvaTec sought discovery into certain submissions made by Smith & Nephew to the FDA that related to a commercial product ConvaTec alleged was covered by its patent-at-issue.  Briefly, ConvaTec alleged that, during a UK proceeding, Smith & Nephew made confidential statements that suggested that it had failed to make the product by its own method and was forced to use methods claimed in ConvaTec’s patent.  This evidence would, per ConvaTec, be relevant secondary considerations of non-obviousness relating to copying and failure of others.  The Board denied the request, finding that ConvaTec failed to provide sufficient explanation and evidence that something useful would be uncovered if discovery were granted.  More specifically, the Board found that, even if the FDA had found that Smith & Nephew’s product was “substantially equivalent,” such a statement would be insufficient evidence of copying.  Order at 5.  Further, the “failure of others” argument was not deemed sufficient to allow discovery because, to establish that factor, there must be evidence of widespread efforts of skilled workers, having knowledge of the prior art, that failed to find a solution to the problem.  This single incident of failure, if proven, would not demonstrate such widespread efforts and failure.  Order at 7.

Blackberry Corp. v. Wi-Lan USA Inc., IPR2013-00126, Paper 15 (August 19, 2013).  Wi-Lan served a “First Request for Production of Documents and Things,” and Blackberry requested a conference call with the Board for guidance on whether it needed to respond to the requests.  In short, the Board said Blackberry need not respond to the requests.  The requests were based on the Routine Discovery provisions of the Patent Office regulations, but with some broadening caveats.  For example, Wi-Lan sought documents “relating to information inconsistent with…,” instead of “information inconsistent with…” as required by the Rules.  Even had the requests identically mirrored the Rules, however, the Board would still have ruled that they need not be responded to.  In short, Routine Discovery is self-executing and self-enforcing and, thus, there is no need for the service of discovery requests to get that information.  Order at 2.

St. Jude Medical, Cardiology Division, Inc. v. Board of Regents of the University of Michigan, IPR2013-00041, Paper 20 (July 31, 2013).  The University of Michigan sought documents St. Jude exchanged with the FDA in obtaining approval to market products covered by the patent-at-issue.  This information was sought for the purpose of seeing if it contained secondary considerations evidence, among other reasons.  St. Jude opposed given the magnitude of the burden on St. Jude to review and produce the documents.  Because Michigan only identified a “possibility” of finding useful information, the request for additional discovery was deemed insufficient by the Board.  Order at 3. University of Michigan was also deemed not to have acted timely in making the request (it having been made only shortly before the Patent Owner Response was due).

Illumina, Inc. v. The Trustees of Columbia University in the City of New York, IPR2012-00006, Paper 42 (May 7, 2013).   Columbia University sought to file a motion for additional discovery to use evidence obtained from Illumina in co-pending litigation.  The Board held that permission to use such evidence was unnecessary – simply, Columbia did not need to take any discovery at all, such discovery had already occurred.  The request for authorization to file the motion was denied, therefore, as moot.

Synopsis, Inc. v. Mentor Graphics Corp., IPR2012-00042, Paper 24 (April 25, 2013).  Mentor Graphics sought discovery relating to the issue of assignor estoppel.  Briefly, Mentor Graphics believed that additional discovery may have led to evidence proving that the petitioner was in privity with an assignor of the patent-at-issue.  For purposes of this motion, the Board assumed it could hear the issue of assignor estoppel, but ultimately denied the motion, in any event, because Mentor Graphics had not proven that the discovery was necessary in the interest of justice.  More specifically, Mentor Graphics: (1) failed to provide an explanation with evidence sufficient to show that something useful will be uncovered by the discovery: (2) failed to provide what efforts it had made to acquire, on its own, the discovery it now seeks; and (3) proffered discovery requests that were burdensome in terms of finances, human resources, and meeting the IPR time schedule.

Redline Detection, LLC v. Star Envirotech, Inc., IPR2013-00106, Paper 31 (August 27, 2013).  In an analogous case to the Mentor Graphics decision discussed above, Star Envirotech’s Motion for Additional Discovery, seeking information that would prove the applicability of an assignor estoppel defense, was denied because this three judge panel decided that assignor estoppel cannot be successfully raised as a defense in an inter partes review.  Thus, because assignor estoppel was not deemed to be a valid defense in inter partes review proceedings, Star Envirotech could not meet its burden to show that the requested discovery was necessary in the interest of justice.

The Exception

Corning Inc. v. DSM IP Assets B.V., IPR 2013-00043, Paper 27 (June 21, 2013).  Proving that it was not simply hitting the “NO Button” with regard to each Motion for Additional Discovery, the Board partially granted DSM’s request for Additional Discovery, allowing DSM discovery into laboratory notebooks and related documents that contained protocols and testing that underlie test results submitted by Corning’s expert.  In this IPR proceeding, Corning took the position that the subject matter in the challenged claims was unpatentable over the prior art based on inherent properties not explicitly recited in the prior art.  As such, Corning’s experts recreated the prior art compositions and tested them to prove that the properties from the DSM patent claims were inherent in those compositions.  DSM obtained the Board’s permission to discover the lab notebooks of Corning’s experts, but not actual samples of the compositions prepared by Corning, nor any testing results that were inconsistent with Corning’s testing (the latter discovery being deemed required already by “Routine Discovery”).