PTAB Decisions by Topic

Adverse Decision/Disclaimer

Under 37 C.F.R. § 42.73(b), a party may request adverse judgment against itself at any time during a proceeding.      A patent owner may file a statutory disclaimer under 35 U.S.C. § 253(a) to disclaim one or more claims of the patent. 37 C.F.R. § 42.107(e) (IPR proceedings) and 37 C.F.R. § 42.207(e) (CBM and PGR proceedings) provide that no IPR, CBM or PGR proceedings will be instituted for disclaimed claims.  Disclaimer of one or more claims has become an effective tool to avoid institution for other challenged claims.

Hospira, Inc. v. Janssen Pharmaceuticals, Inc., IPR2013-00365, Paper 9 (PTAB Oct. 24, 2013)  Prior to filing its preliminary response, patent owner disclaimed all claims challenged in the petition.  While noting that 37 C.F.R. § 42.107(e) provides that no inter partes review will be instituted for disclaimed claims, the Board nevertheless construed patent owner’s disclaimer of all challenged claims as a request for adverse judgment pursuant to 37 C.F.R. § 42.73(b), and entered adverse judgment against patent owner.

Google Inc. v. SimpleAir, Inc., CBM2015-00019, Paper 11 (PTAB May 19, 2015)Prior to filing the preliminary response, patent owner disclaimed several claims challenged in the petition.  Petitioner cited two claims to support its assertion that the patent is CBM-eligible under AIA § 18(d)(1).  Patent owner disclaimed one of those claims.  The Board determined that petitioner did not demonstrate that the claim which was not disclaimed meets the requirements of AIA § 18(d)(1).  The Board treated the disclaimed claim which allegedly met the requirements of AIA § 18(d)(1) as never having existed.  Since petitioner did not demonstrate that the patent includes at least one claim that makes it a CBM-eligible patent, the Board denied institution.

American Express Co. v. Maxim Integrated Prods., Inc., CBM2015-00098, Paper 17 (PTAB Sept. 22, 2015).  In its petition for CBM review, petitioner identified claim 2 as being directed to a financial product or service.  Prior to institution, patent owner disclaimed claim 2 in an attempt to deny standing for CBM review.  The Board disagreed with patent owner that the patent was no longer eligible for CBM review.  The Board noted that petitioner argued that “the claims” of the patent demonstrate that the patent satisfies the financial product or service requirement.  The Board interpreted the petition as using claim 2 as an example, and determined that petitioner’s arguments regarding the financial product or service requirement applied more broadly to the subject matter of all claims of the patent.   The Board determined that claim 1, from which claim 2 depends, satisfied the financial product or service requirement and accordingly instituted CBM review.

FCA US LLC v. Jacobs Vehicle Sys., Inc., IPR2015-01234 (PTAB Oct. 23, 2015)Prior to institution, patent owner disclaimed all challenged claims, and then filed a preliminary response arguing that the Board should deny institution rather than enter adverse judgment against patent owner.  Petitioner argued that the Board should enter adverse judgment.  The Board denied institution since all challenged claims were disclaimed prior to institution.  The Board determined that patent owner’s disclaimers should not be construed as a request for adverse judgment.  Under 37 C.F.R. § 42.73(b), a party may request judgment against itself during trial.  The term “trial” in 37 C.F.R. § 42.73(b)(2) means “a contested case instituted by the Board based upon a petition.”

Great West Casualty Co v. Intellectual Ventures II LLC, CBM2015-00171, Paper 10 (PTAB Feb. 9, 2016). After a CBM petition was filed and prior to the Board’s institution decision, patent owner disclaimed half of the challenged claims.  The Board denied institution of CBM review because petitioner did not show that the remaining claims of the patent make the patent eligible for CBM review under AIA § 18(d)(1).  For the purposes of determining whether to institute CBM review, the Board treated the disclaimed claims as never having existed.

J.P. Morgan Chase & Co. v. Intellectual Ventures II LLC, CBM2014-00157, Paper 40 (PTAB Jan. 12, 2016)The Board held that patent owner cannot remove standing for CBM review after institution by disclaiming claims of the patent which make the patent CBM-eligible under AIA § 18(d)(1). Standing for CBM review is determined at the time of institution.  If petitioner satisfies the standing requirements of 35 U.S.C. § 321(a) and AIA § 18(a)(1)(B) at the time the petition is filed, and the patent has at least one claim directed to CBM review at the time of institution, petitioner maintains standing in the CBM proceeding regardless of whether patent owner subsequently disclaims claims that are directed to a financial service or product.  AIA § 18(a)(1)(E) only requires that the patent be CBM eligible at the time of institution.

CoreLogic, Inc. v. Boundary Sols., Inc., CBM2016-00016, Paper 9 (PTAB May 24, 2016)The Board denied institution of CBM review after patent owner disclaimed claims that petitioner identified as making the patent eligible for CBM review.  Petitioner alleged that claims 1, 13 and 16-18 recite data processing operations that are financial in nature.  Patent owner disclaimed claims 13 and 16-18 when filing its preliminary response.  The Board treated claims 13 and 16-18 as having never existed.  The Board disagreed with petitioner that claim 1 recites data processing used in a financial activity, indicating that petitioner’s reliance on the specification was unavailing because petitioner did not sufficiently identify how the cited portions of the specification relate to the language of claim 1.

Appellate Jurisdiction and Standards of Review

Below are Federal Circuit decisions relating to appeals originating from AIA proceedings, including decisions concerning the Federal Circuit’s jurisdiction to review PTAB decisions and the standards of review applied by the Federal Circuit.

St. Jude Med. Cardiology Div., Inc. v. Volcano Corp., 749 F.3d 1373 (Fed. Cir. 2014). St. Jude appealed the Board’s decision not to institute its IPR petition on the basis that St. Jude was time-barred under 35 U.S.C. § 315(b). The Federal Circuit held that it cannot hear St. Jude’s appeal pursuant to 35 U.S.C. § 314(d), which “certainly bars an appeal of the non-institution decision.”

In re Dominion Dealer Sols., Inc., 749 F.3d 1379 (Fed. Cir. 2014). Dominion Dealer’s IPR petitions were denied based on the Board’s determination that the petitions did not establish a reasonable likelihood of prevailing. Dominion Dealer petitioned the Federal Circuit for mandamus relief, requesting the Federal Circuit to vacate the institution decisions and order the Board to institute IPR proceedings. The Federal Circuit denied mandamus relief, holding that Dominion Dealer did not have a “clear and indisputable right” right to relief, which is a requirement for mandamus relief. Dominion Dealer did not have a “clear and indisputable” right due to the non-appealability provisions of 35 U.S.C. § 314(d).

In re Procter & Gamble Co., 749 F.3d 1376 (Fed. Cir. 2014). Patent owner petitioned the Federal Circuit for a writ of mandamus to compel the Board to vacate its institution decision.  Patent owner argued that petitioner was barred from seeking review under § 315(a) because it filed a declaratory judgment action prior to filing the petition.  The Board disagreed and instituted trial.  Following its reasoning in St. Jude and Dominion Dealer, the Federal Circuit denied mandamus and dismissed the appeal because patent owner did not have a right to appeal the institution decision.  The Federal Circuit held that it “may not hear an appeal from the Director’s decision not institute an inter partes review.”

GEA Process Eng’g v. Steuben Foods, Inc., 618 Fed.Appx. 667 (Fed. Cir. 2015)The Board vacated five IPR decisions to institute based on its determination that GEA did not name all real parties-in-interest.  The Federal Circuit held that it lacked authority to hear GEA’s appeal under § 314(d).  The Federal Circuit determined that the Board’s dismissal of the IPR proceedings is not a final written decision with respect to the patentability of the challenged claims under § 318(d).  The Federal Circuit also denied mandamus for the same reasons as in Dominion Dealer.

In re Cuozzo Speed Techs., LLC, 778 F. 3d 1271 (Fed. Cir. 2015), rehearing denied en banc, 793 F.3d 1297 (Fed. Cir. 2015), affirmed, 136 S. Ct. 2131 (2016). The Board has statutory authority to construe claims using the broadest reasonable interpretation standard, rather than the Phillips standard used in district court litigation. The Federal Circuit does not have jurisdiction under 35 U.S.C. § 314(d) to review the Board’s institution decision, even if the Board instituted grounds of challenge not presented in the petition.

GTNX, Inc. v. INTTRA, Inc., 789 F.3d 1309 (Fed. Cir. 2015). After instituting CBM review, the Board vacated its institution decision and terminated the proceeding, because petitioner had previously filed a declaratory judgment action against the challenged patent. The Federal Circuit held that the Board’s decision to reconsider its institution decision is effectively a decision on institution, which is not reviewable under 35 U.S.C. § 324(e). “Administrative agencies possess inherent authority to reconsider their decisions, subject to certain limitations, regardless of whether they possess explicit statutory authority to do so.”

Achates Reference Publ’g, Inc. v. Apple Inc., 803 F.3d 652 (Fed. Cir. 2015). The Federal Circuit held that an issue relating to the Board’s decision to institute an IPR does not become appealable if the Board addresses or reconsiders that issue in the final written decision.

Medtronic, Inc. v. Robert Bosch Healthcare Systems, Inc., No. 2015-1977, Doc. 33 (Nov. 17, 2015). Prior to being acquired by petitioner, a third party filed IPR petitions that were not instituted.  After acquiring the third party, petitioner then filed IPR petitions that were institued.  Medtronic did not name the new subsidiary as a real party-in-interest (RPI).  The Board vacated the instituted proceedings, finding that petitioner was acting as a proxy for its time-barred new subsidiary.  Petitioner requested to correct the petitions to name its new subsidiary as an RPI, but the Board denied the request, finding that the petitions would require a new filing date if the subsidiary was added, but doing so would be futile because the subsidiary was time-barred.  The Federal Circuit ruled that, under § 314(d), it cannot hear appeals on the Board’s decision to reconsider and vacate its institution determination because the Board’s decision is not a final written decision on the patentability of the claims. The Federal Circuit also rejected petitioner’s request to treat the appeal as a writ of mandamus.  Petitioner argued that it should have been allowed to add its subsidiary as an RPI as part of its mandamus argument, but the Federal Circuit, citing In re Dominion Dealer, determined that petitioner did not have a “clear and indisputable” right to relief in view of § 314(b)’s bar on reviewing institution decisions.

Versata Dev. Grp., Inc. v. SAP Am., Inc., 793 F.3d 1306 (Fed. Cir. 2015). The Federal Circuit held that the Board’s decision concerning whether a patent qualifies as a “covered business method” patent under AIA § 18(d) is judicially reviewable as part of the appellate review of the final written decision. The Federal Circuit cannot review whether the Board should have instituted CBM review in the first place. “As a matter of statutory construction, the definition of ‘covered business method review’ is not limited to products and services of only the financial industry, or to patents owned by or directly affecting the activities of financial institutions such as banks and brokerage houses….[The] plain text of the statutory definition contained in § 18(d)(1)…on its face overs a wide range of financial-related activities.”

SightSound Techs., LLC v. Apple Inc., 809 F.3d 1307 (Fed. Cir. 2015). The Federal Circuit held that it does not have authority, pursuant to 35 U.S.C. § 324(e), to review whether the Board properly instituted a CBM review on grounds of challenge not asserted in the petition. In instituting CBM review, the Board exercised its discretion to institute grounds of obviousness based on anticipation grounds asserted in the petition. Petitioner had asserted only anticipation grounds in the petition. In the final written decision, the Board determined that the claims were unpatentable as obvious but were not anticipated. The Federal Circuit held that the CBM statute “does not limit the Board’s authority at the final decision stage to grounds alleged in the CBM petitions.” While the Federal Circuit cannot review the Board’s decision to institute grounds not asserted in the petition, the court can review whether the patent qualifies as a CBM patent because it “is a limitation on the Board’s authority to issue a final decision.”

Ethicon Endo-Surgery, Inc. v. Covidien LP, 812 F.3d 1023 (Fed. Cir. 2016). The Board’s decision whether to institute inter partes review is final and non-appealable, but § 314(d) does not prevent the Federal Circuit from hearing the presented challenge to whether the same panel that decided to institute review can decide the merits of the proceeding. Having the same panel which decided to institute inter partes review decide the merits of the patentability of the claims in a final written decision does not violate the AIA or the Due Process Clause of the Constitution.

MCM Portfolio LLC v. Hewlett-Packard Co., 812 F.3d 1284 (Fed. Cir. 2015). In addition to affirming the constitutionality of IPR proceedings, the Federal Circuit reaffirmed the ruling in Achates, holding that the Federal Circuit is prohibited under 35 U.S.C. § 314(d) from reviewing the Board’s determination to initiate IPR proceedings based on the Board’s assessment of the time-bar of 35 U.S.C. § 315(b).

Synopsys, Inc. v. Mentor Graphics Corp., 814 F.3d 1309 (Fed. Cir. 2016). The Board is not required to issue a final written decision for all clams challenged in a petition.  35 U.S.C. § 318(a) requires the Board to issue a final written decision with respect to “any patent claim challenged by the petitioner.”  35 U.S.C. § 318(a) only applies to claims for which the IPR was instituted, not every claim challenged in the petition.  35 U.S.C. § 314(a) allows the Board to institute inter partes review on a claim-by-claim basis.  The decision of the Board to institute review as to some or all claims challenged is not reviewable under § 314(d).  A final written decision will have a limited estoppel effect for claims whose review the Board did not institute.

Harmonic, Inc. v. Avid Technology Inc., 815 F.3d 1356 (Fed. Cir. 2016).  A decision by the Board to institute some grounds but not others is not judicially reviewable under 35 U.S.C. § 314(d).  In this case, pursuant to 37 C.F.R. § 42.108(a), the Board declined to review some of the asserted grounds on the basis that these grounds were redundant to the instituted grounds.  The Federal Circuit stated that “[a] decision to institute on only a subset of the grounds identified in the petition is simply a combination of” a decision to institute and a decision not to institute.  The Federal Circuit held that the Board may deny some grounds as redundant.

Shaw Indus. Grp. v. Automated Creel Sys., 817 F.3d 1293 (Fed. Cir. 2016). Grounds of challenge which are denied institution as “redundant” are not appealable under 35 U.S.C. § 314(d).  However, petitioner is not estopped from asserting such “redundant” grounds in a future proceeding.  The estoppel preclusion applies only to grounds of challenge that were raised or could have been raised during the IPR review.  An IPR review does not begin until institution.  Consequently, grounds which are denied institution are not subject to the estoppel preclusion because they could not have been raised during the IPR review.

Intelligent Bio-Systems Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359 (Fed. Cir. 2016). The Federal Circuit reviews decisions related to compliance with the Board’s procedures, including whether a petitioner exceeded the scope of a proper reply (37 C.F.R. § 42.23(b)) or improperly incorporated arguments by reference from another document (37 C.F.R. § 42.6(a)(3)), under the abuse of discretion standard. “It is of the utmost importance that petitioners in the IPR proceedings adhere to the requirement that the initial petition identify ‘with particularity’ the ‘evidence that supports the grounds for challenge to each claim.’” 35 U.S.C. § 312(a)(3).

In re Warsaw Orthopedic, Inc., Appeal Nos. 2015-1050, 2015-1058 (Fed. Cir. Aug. 9, 2016). The Federal Circuit reviews the Board’s legal conclusions de novo, and its factual findings for substantial evidence.  Obviousness is a question of law based on underlying findings of fact.  The Graham factors are each questions of fact that are reviewed under the substantial evidence standard.  Substantial evidence is something less than the weight of the evidence but more than a scintilla of evidence.  In reviewing the Board’s determination that the claims were obvious, the Federal Circuit may not reweigh facts already considered by the Board.   A finding of evidence does not require a cited reference to expressly disclose each limitation.  The Federal Circuit upheld the Board’s obviousness determination for most of the claims.  The Federal Circuit, however, vacated part of the Board’s decision because the Board did not sufficiently describe its rationale for concluding that a claim is obvious.  The Board provided only a single sentence for claim 17, indicating that the asserted reference “appears to disclose” a feature of the claim.  The Federal Circuit explained that the Board must set forth “logical and rational” reasons to support its decision.

Wi-Fi One, LLC v. Broadcom Corp., Appeal No. 2015-1944 (Fed. Cir. Sept. 16, 2016). The Federal Circuit affirmed the Board’s determination that several of the claims are anticipated.  Patent owner (Wi-Fi One) argued that petitioner should have been barred under 35 U.S.C. § 315(b) on the basis that petitioner was in privity with entities who had previously been sued for infringement more than one year prior to filling of the petition.  The Board disagreed with the patent owner’s § 315(b) argument, determining that petitioner was not a privy of the prior litigants because patent owner did not show that petitioner controlled the district court litigation or that petitioner would be bound by the outcome of that litigation. The Board also denied patent owner’s motion for discovery on the privity issue. Following the Achates decision, the Federal Circuit held that it cannot review the Board’s determination that petitioner was not barred from challenging the patent under § 315(b), because that determination relates to the Board’s institution decision.  Decisions on institution are not reviewable under § 314(d).  In Cuozzo, “[t]he Supreme Court extended the preclusion of judicial review to statutes related to the decision to institute; it did not limit the rule of preclusion to substantive patentability determinations made at the institution stage.”

Husky Injection Molding Sys., Ltd. v. Athena Automation Ltd., Appeal No. 2015-1726, -1727 (Fed. Cir. Sept. 23, 2016). The Federal Circuit held that it did not have jurisdiction to hear patent owner’s appeal of the Board’s decision not to decline institution based upon the equitable doctrine of assignor estoppel.  Relying on Cuozzo, the Federal Circuit held that reviewing the Board’s refusal to deny institution on the ground of assignor estoppel is not permitted under § 314(d).  The court set forth a two-step analysis for determining whether an institution decision is reviewable.  First, the court must determine whether the challenge is “closely tied to the application and interpretation of statutes related to the Patent Office’s decision to initiate inter partes review,” which would preclude review, or whether the challenge “implicate[s] constitutional questions,” “depend[s] on other less closely related statutes,” or “present[s] other questions of interpretation that reach…well beyond” the general bar against reviewability.  Second, in case the decision is “closely tied” to the statute, the court must determine whether the challenge is “directed to the Board’s ultimate invalidation authority with respect to a specific patent” (e.g., whether the patent is CBM-eligible), in which case the institution decision is reviewable.

Burden of Persuasion

A petitioner has the ultimate burden of persuasion to prove unpatentability of the challenged claims by a preponderance of the evidence.  35 U.S.C. §§ 316(e) and 326(e).

Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375 (Fed. Cir. 2015). In an IPR, petitioner has the ultimate burden of persuasion to prove unpatentability by a preponderance of the evidence, and this burden never shifts to patent owner. In addition, petitioner has the initial burden of production—a burden of going forward with the evidence.   The burden of production shifts to patent owner once petitioner comes forward with evidence establishing prior art.  There is no presumption that an asserted reference patent is entitled to the benefit of the filing date of provisional application, or an earlier-filed non-provisional application if the asserted reference patent issued from a CIP application.   A reference patent is only entitled under § 119(e)(1) or § 120 to claim the benefit of the filing date of a provisional application or earlier-filed nonprovisional application if the disclosure of the prior application provides support for the claims in the reference patent in compliance with § 112, ¶ 1.

Trivascular, Inc. v. Samuels, 812 F.3d 1056 (Fed. Cir. 2016). The Board is not bound by any determination made in the institution decision. “There is a significant difference between a petitioner’s burden to establish a ‘reasonable likelihood of success’ at institution, and actually proving invalidity by a preponderance of the evidence at trial” (quoting and comparing 35 U.S.C. § 314(a) and § 316(e)).

In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364 (Fed. Cir. 2016)The Federal Circuit reversed the Board’s decision of obviousness, holding that the Board improperly shifted the burden of proof to patent owner to prove patentability.  The burden of proof in post-grant challenges involves two burdens: the burden of persuasion and the burden of production.  The burden of persuasion is the ultimate burden assigned to a party who must provide something to a specified degree of certainty.  The burden of production entails producing additional evidence and presenting persuasive argument based on new evidence or evidence already on record.  Petitioner continues to bear the burden of proving unpatentability after institution (i.e., the burden of persuasion), and must do so by a preponderance of the evidence at trial.  The Federal Circuit rejected the PTO’s argument that patent owner should have the burden of production to produce evidence of nonobviousness after the Board found, at institution, a reasonable likelihood that petitioner would prevail in demonstrating the unpatentability of the challenged claims.  The PTO’s proposed burden shifting is at odds with precedent establishing that different analyses are applied at institution and at the final written decision.  The ultimate burden of proving unpatentability remains with petitioner throughout the trial.  The Federal Circuit also held that the Board cannot adopt arguments that petitioner could have made but did not.  A petitioner cannot satisfy its burden of proving obviousness by “mere conclusory statements.”  The Board “must base its decision on arguments that were advanced by a party, and to which the opposing party was given a chance to respond.”  A party does not have to request reconsideration from the Board.  Nothing in the statute or rules requires a party to request rehearing even though the rules permit such a request.

Polaris Wireless, Inc. v. Trueposition, Inc., IPR2013-00323, Paper 9 (PTAB Nov. 15, 2013) In an IPR, the burden is on petitioner to show a reasonable likelihood that it would prevail on a ground of unpatentability.  The Board does not presume that challenged claims are entitled to the earlier filing dates of ancestral applications which do not share the same disclosure as the challenged patent.  But, in such circumstances, the issue first has to be raised by petitioner in its petition, by identifying the claims (including their specific limitations) allegedly lacking 35 U.S.C. § 112, first paragraph, written description and enabling disclosure support for the challenged claims in the priority application. Then, patent owner has to make a sufficient showing of entitlement to the earlier filing date, in a manner that is commensurate in scope with the specific points and contentions raised by petitioner.

Corning Inc. v. DSM IP Assets B.V., IPR2013-00053, Paper 66, at 19 (PTAB May 1, 2014) Patent Owner submitted a Declaration Under 37 C.F.R. 1.131 to antedate an asserted reference.  The Declaration was signed by only one of the inventors.  The Board rejected petitioner’s argument that the Declaration must be signed by all the inventors.  The Board emphasized that although patent owner bears the burden of production in antedating a reference, the burden of persuasion to prove unpatentability of the challenged claims remains with the petitioner, in accordance with 35 U.S.C. § 316(e).

BAE Sys. Info. and Elec. Sys. Integration, Inc. v. Cheetah Omni, LLC, IPR2013-00175, Paper 45 (PTAB June 19, 2014)Patent owner did not submit declaration testimony to challenge the declaration testimony of petitioner’s expert. The Board therefore treated the declaration testimony of petitioner’s expert as unrebutted.  Attorney argument is not evidence.

Amazon.com, Inc. v. Personalized Media Comms., LLC, IPR2014-01533, Paper 16 (PTAB Apr. 20, 2015).  The Board denied institution for two grounds of challenge on the basis that petitioner did not demonstrate that the asserted references were prior art against the patent because petitioner did not demonstrate that the references were entitled to their earlier priority dates.  Petitioner sought rehearing of the Board’s determination that the references were not demonstrated to be prior art.  The Board denied petitioner’s rehearing request, asserting that petitioner did not satisfy its burden to show that there was no break in a reference patent’s priority claim and that the reference patent is entitled to a specific priority date.  A petitioner must identify, specifically, the disclosure in ancestral applications that do not share the same disclosure and which allegedly show § 112 support for the relied-upon priority date.  Petitioner should not expect the Board to search the record and cull together the evidence necessary to support petitioner’s arguments.

Masterimage 3D, Inc. v. RealD Inc., IPR2015-00040, Paper 42 (PTAB July 15, 2015) (precedential). In a motion to amend, patent owner has the burden of demonstrating that proposed substitute claims are patentable over the prior art of record. Once patent owner has set forth a prima facie case of patentability of its proposed substitute claims over the prior art of record, the burden of production shifts to petitioner.

Apple, Inc. v. DSS Tech. Mgmt., Inc., IPR2015-00369, Paper 14 (PTAB Aug. 12, 2015). Although the Board takes into account a patent owner’s preliminary response, if such a response is filed under 37 C.F.R. § 42.108(c), the filing of a preliminary response is optional, and the Board does not construe a patent owner’s failure to raise any particular argument in a preliminary response as a concession or waiver.

Marvell Semiconductor, Inc. v. Intellectual Ventures I LLC, IPR2014-00552, Paper 79 (PTAB Nov. 30, 2015). The disqualification of a reference as prior art against the challenged patent under 35 U.S.C. § 103(c) involves a shifting burden of production. Once petitioner establishes that the reference qualifies as prior art under 35 U.S.C. § 102(e), the burden shifts to patent owner to demonstrate that 35 U.S.C. § 103(c) applies. First, patent owner must establish the date on which the invention of the challenged patent was made. Here, the parties agreed that date was filing date of a provisional application that led to the challenged patent. Next, patent owner must establish that, as of that date, both the challenged patent and the reference patent were either “owned by the same person or subject to an obligation of assignment to the same person.” Patent owner was unable to prove the existence of a written employment agreement that contractually would require the inventors to assign rights to the earlier patent owner. But patent owner successfully persuaded the Board that “the common law right of an employer in the inventions of an employee who was employed to invent” applied to show common ownership. Based on this showing, the Board determined that the reference patent was not prior art against the challenged patent under 35 U.S.C. § 103(c).

Global Tel*Link Corp. v. Securus Techs., Inc., IPR2014-00825, Paper 36 (PTAB Dec. 2, 2015). The burden of production shifts to patent owner to disqualify a reference as prior art under 35 U.S.C. § 103(c) if petitioner demonstrates that the reference qualifies as prior art under 35 U.S.C. § 102(e) and, in combination with one or more prior art references, would render the challenged claims obvious under 35 U.S.C. § 103(a). Patent owner must establish the date on which the invention of the challenged patent was made. This date is presumed to be the effective filing date of the patent, unless there is credible evidence to the contrary. Patent owner must also establish that the claimed invention and prior art reference were “owned or subject to an obligation of assignment” to the same person or entity as of the date of invention. Here, patent owner produced assignment and corporate records showing common ownership at the time of the invention of the challenged patent. The burden of production then shifts to petitioner to present evidence or arguments showing that the patent or prior art are not subject to 35 U.S.C. § 103(c).

BioDelivery Sciences Int’l, Inc. v. Monosol Rx, LLC, IPR2015-00165, Paper 70 (PTAB Mar. 24, 2016)The Board disagreed with petitioner’s argument that patent owner should be collaterally estopped from contesting the Board’s prior finding in an appeal of an inter partes reexamination of a related patent that an asserted reference inherently discloses a claimed feature.  Under the doctrine of collateral estoppel, also known as issue preclusion, a judgment on the merits in a first proceeding precludes relitigation in a second proceeding of issues actually litigated and determined in the first proceeding.  However, issue preclusion is premised on principles of fairness and, therefore, issue preclusion may be inappropriate when the forum in the second action affords the party against whom preclusion is asserted procedural opportunities in the presentation and determination of the issues that were not available in the first action and could likely result in the issue being differently determined.  The instant trial, including cross-examination of witnesses, offers a significant procedural opportunity to the parties that was not available in the prior inter partes reexamination proceeding of the related patent.  Further, issue preclusion is not appropriate because the Board’s finding in the prior inter partes reexamination proceeding addressed different claim features.

Instradent USA, Inc. v. Nobel Biocare Services AG, IPR2015-01784, Paper 14 (PTAB Feb. 17, 2016) The Board denied institution, in part, because petitioner improperly relied upon the scale of features illustrated in the drawings of an asserted reference.  Patent drawings do not define the process proportions of the elements and may not be relied on to show particular sizes if the specification is completely silent on the issue.

Alarm.com Inc. v. Vivint, Inc., IPR2015-01995, Paper 14 (PTAB Apr. 4, 2016)The Board denied institution of an anticipation ground because, under the holding in Typhoon Touch Technologies, Inc. v. Dell, Inc., 659 F.3d 1376, 1380 (Fed. Cir. 2011), it is not enough to find that a prior art device is capable of being modified to operate in a manner that would anticipate the claims. Although the asserted reference may indeed perform the same functions as the claim feature in actual operation, mere probabilities or possibilities fall short of demonstrating that asserted reference necessarily discloses the claimed features, as is required for a ground based on anticipation.

Apple Inc. v. e-Watch, Inc., IPR2015-00412, Paper 50 (PTAB May 6, 2016). The Board disagreed with patent owner’s argument that petitioner could not present alternative challenges asserting that a prior art reference anticipates the claim and that, if the reference does not disclose a particular limitation, the claim would have been obvious over that reference in view of another reference. Nothing precludes petitioner from making a second argument in the alternative in that manner, so long as what is conveyed is clear and unambiguous.  37 C.F.R. § 42.104 does not prohibit petitioner from pursuing alternative challenges.

Civil Action Bar Under §315(a)(1) or §325(a)(1)

An IPR, CBM or PGR proceeding may not be instituted if the petitioner or real party-in-interest of the petitioner filed a civil action challenging the validity of a claim of the patent before filing the petition.  See 35 U.S.C. § 315(a)(1) (IPR proceedings) and 35 U.S.C. § 325(a)(1) (CBM and PGR proceedings).

CyanoTech Corp. v. Board of Trustees of the Univ. of Illinois, IPR2013-00401, Paper 17 (PTAB Dec. 9, 2013) The Board determined that petitioner was not barred under 35 U.S.C. § 315(a)(1) because petitioner’s earlier declaratory judgment action was dismissed without prejudice.  Since the prior civil action was dismissed without prejudice, it is a nullity and the parties are left in the same legal position as if the action was never filed.  Therefore, in the context of § 315(a)(1), the prior action was never filed.  As such, petitioner is not barred under § 315(a)(1).

Ariosa Diagnostics v. Isis Innovation Ltd., IPR2012-00022, Paper 166 slip op. at 14 (PTAB Sept. 2, 2014).  Under 35 U.S.C. § 315(a)(1), “[a]n inter partes review may not be instituted if, before the date on which the petition for such a review is filed, the petitioner or real party in interest filed a civil action challenging the validity of a claim of the patent.” A civil action for a declaratory judgment of non-infringement is not “a civil action challenging the validity of a patent” under §315(a)(1).   Moreover, asserting an affirmative defense of invalidity is treated differently than a counterclaim for invalidity, and thus for the purposes of § 315(a)(1) cannot be considered a filing of a civil action for invalidity.

SecureBuy LLC v. Cardinal Commerce Corp., CBM2014-00035, Paper 12 (Apr. 25, 2014) (precedential).  The Board held that the estoppel provisions of 35 U.S.C. § 325(a)(1) apply to CBM reviews.  § 325(a)(1) provides that “[a] post-grant review may not be instituted if, before the date on which the petition for such a review is filed, the petitioner or real party in interest filed a civil action challenging the validity of a claim of the patent.” AIA § 18(a)(1) provides that CBM review proceedings shall employ all the statutory standards and procedures of a post-grant review (i.e., 35 U.S.C. §§ 321-329) except for those expressly included (i.e., 35 U.S.C. §§ 321(c); 325(b), (e)(2), (f)).  § 325(a)(1) therefore applies to CBM reviews.  Prior to filing its CBM petition, petitioner filed a declaratory judgment for invalidity.  Under § 325(a)(1), the Board was therefore prevented from instituting based on petitioner’s prior civil action.

CQG, Inc. v. Trading Techs. Int’l, Inc., CBM2015-00057, Paper 12 (PTAB July 10, 2015).  The Board denied institution on the basis that petitioner was barred from seeking review under 35 U.S.C. § 325(a)(1) because petitioner had filed a declaratory judgment (DJ) action prior to filing the petition.  § 325(a)(1) applies to CBM proceedings (citing SecureBuy, CBM2014-00035, Paper 12 (Apr. 25, 2014)).  Petitioner filed the DJ action in Colorado, while patent owner filed an infringement complaint in Illinois.  The Colorado DJ action was dismissed without prejudice and transferred to Illinois.  The Board determined that, although the Colorado DJ action was dismissed without prejudice, it was done so by agreement of the parties and transferred to the Illinois infringement action, effectively joining both actions.  The legal positions of petitioner continued in the Illinois action, and therefore petitioner’s DJ action prior to filing the petition bars consideration of the petition.

Tristar Prods., Inc. v. Choon’s Design, LLC, IPR2015-01883, Paper 6 (Mar. 9, 2016) The Board determined that petitioner was not barred under 35 U.S.C. § 315(a)(1) because petitioner’s earlier declaratory judgment action was dismissed without prejudice.  Because the effect of a voluntary dismissal without prejudice is to render the prior action a nullity, such actions cannot give rise to a statutory bar under § 315(a)(1).  Patent owner argued that, although the declaratory judgment action was dismissed without prejudice, the statutory bar should still apply because petitioner did not let the claims from the declaratory judgement action rest, but instead brought its claims as affirmative defenses and counterclaims of invalidity in the related district court litigation.  The Board disagreed, noting that the declaratory judgement was dismissed voluntarily and was not consolidated with the district court litigation, and that petitioner raised new and separate affirmative defenses and counterclaims in the related district court litigation.  Further, § 315(a)(3) explicitly states that “[a] counterclaim challenging the validity of a claim of a patent does not constitute a civil action challenging the validity of a claim of patent for purposes of this subsection.”

Informatica Corp. v. Protegrity Corp., CBM2015-00021, Paper 37 (PTAB Apr. 19, 2016).  The Board denied patent owner’s request to rehear its argument that petitioner should have been barred from pursuing CBM review because it filed a civil action before filing the CBM petition.  Petitioner’s filing of a civil action before the petition did not trigger the statutory bar of 35 U.S.C. 325(a)(1), because the civil action was dismissed without prejudice.

Xilinx, Inc. v. Papst Licensing GmbH & Co., KG, IPR2016-00104, Paper 8 (PTAB May 6, 2016).  The Board determined that petitioner was not barred under 35 U.S.C. § 315(a)(1).  Prior to filing the petition, petitioner filed an action in district court seeking declaratory judgment of invalidity and non-infringement of the patent. The district court dismissed the action without prejudice for lack of personal jurisdiction prior to the filing date of the petition. Petitioner has appealed to the Federal Circuit the dismissal as to non-infringement, but petitioner has not appealed the dismissal as to invalidity. The federal courts have consistently interpreted the effect of dismissal without prejudice as leaving the parties as though the action had never been brought. Since petitioner has not appealed the dismissal as to invalidity, the appellate court lacks jurisdiction over issues not appealed. Accordingly, the dismissal as to invalidity is final, and the parties are in the same position as though the action challenging validity never existed.

Claim Construction

Below are PTAB cases and Federal Circuit appeals addressing claim construction. As affirmed by the Supreme Court in Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131 (2016), the Board uses the broadest reasonable interpretation standard to interpret the scope of claim terms in an unexpired patent. Either party may request a district court-type claim construction (see Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005)) if that party certifies that the challenged patent will expire within 18 months from the entry of the Notice of Filing Date Accorded to Petition.  37 C.F.R. § 42.100(b).

Trivascular, Inc. v. Samuels, 812 F.3d 1056 (Fed. Cir. 2016). Under the broadest reasonable interpretation standard, “the Board must determine the scope of the claims by giving them their broadest reasonable construction in light of the specification as they would be interpreted by one of ordinary skill in the art….[W]ords of the claim must be given their plain meaning, unless such meaning is inconsistent with the specification and prosecution history. While the broadest reasonable interpretation standard is broad, it does not give the Board an unfettered license to interpret the words in a claim without regard for the full claim language and the written description. Construing individual words of a claim without considering the context in which those words appear is simply not ‘reasonable.’ Instead, it is the ‘use of the words in the context of the written description and customarily by those of skill in the relevant art that accurately reflects both the ‘ordinary’ and ‘customary’ meaning of the terms in the claims.’” Prosecution history disclaimer does not apply to claim amendments made during prosecution if the examiner is convinced of patentability without regard to the amendment.

SAS Inst. Inc. v. ComplementSoft, LLC, 825 F.3d 1341 (Fed. Cir. 2016). The Federal Circuit faulted the Board for changing its claim construction after the institution decision and not affording the parties an opportunity to brief the changed claim construction.  The court determined that the lack of notice was a violation of § 554(b)(3) of the Administrative Procedures Act.  “It is difficult to imagine either party anticipating that already-interpreted terms were actually moving targets, and it is thus unreasonable to expect that they would have briefed or argued, in the alternative, hypothetical constructions not asserted by their opponent.”  While the court agreed with the Board’s revised construction, it faulted the Board for not giving the parties an opportunity to brief the issue.  “[A]n agency may not change theories in midstream without giving respondents reasonable notice of the change and the opportunity to present argument under the new theory” (citing Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1080 (Fed. Circ. 2015)).

Google Inc. v. SimpleAir, Inc., CBM2014-00054, Paper 19 (PTAB May 13, 2014) The Board may adopt the district court’s claim constructions in the related litigation if the “constructions of each claim term are consistent with their broadest reasonable interpretation in light of the specification.”

Amkor Tech., Inc. v. Tessera, Inc., IPR2013-00242, Paper 129 (PTAB May 22, 2014). After patent owner filed a patent owner response and petitioner filed a reply, patent owner sought to file a terminal disclaimer so that the patent would expire during the proceeding. Patent owner argued that if the patent was expired, the Board should change its claim interpretation standard to the Phillips standard, rather than the “broadest reasonable interpretation” (BRI) standard. The Board declined to change the claim interpretation standard due to the late stage of the proceeding, since all of the parties’ arguments until that point applied the BRI standard, and patent owner had an opportunity to amend its claims but declined to do so.

Nestle USA, Inc. v. Steuben Foods, Inc., IPR2015-00023, Paper 17 (PTAB June 29, 2015). The Board was not persuaded to reconsider its institution decision on the basis that the Board’s construction of a claim term contradicts the Board’s construction of the same term in another IPR proceeding for the same patent as well as other IPR proceedings for related patents. The Board noted that “Petitioner does not cite any statute, regulation, rule or case law requiring that our construction of specific claim term be identical in every proceeding.” The Board emphasized that its institution decisions and associated claim constructions are made on a case-by-case basis, taking into account the particular facts of each case.

Toyota Motor Corp. v. Cellport Systems, Inc., IPR2015-00633, Paper 11 (PTAB Aug. 14, 2015).  For a patent that will expire before the Board is likely to issue a final written decision, the Board will apply the Phillips claim construction standard, instead of the broadest reasonable interpretation (BRI) standard.  Petitioner argued that the claims should be interpreted according to the Phillips standard, while patent owner argued that the claims should be interpreted according to the BRI standard.  At the institution stage, the Board must determine whether petitioner has demonstrated a reasonable likelihood of prevailing in the proceeding.  In order to make this determination, the Board will analyze petitioner’s arguments through the lens of the claim construction standard that will apply to the final written decision.  The Board therefore applied the Phillips standard in the institution decision since the patent will expire when the final written decision is scheduled to issue.

Toshiba Corp. v. Intellectual Ventures I LLC, IPR2014-00310, Paper 34 (PTAB Mar. 3, 2016). The Board denied petitioner’s request for rehearing which challenged the Board’s construction of two terms as not being synonymous. The Board noted that the patent distinguishes between the two terms because it uses both terms separately and does not clearly assert that they are the same or equivalent terms. If the patentee uses different terms to identify similar claim limitations, those terms should have different meanings.

McAfee, Inc. v. CAP Co. Ltd., IPR2015-01855, Paper 14 (PTAB Mar. 8, 2016). The Board determined that amendments to the preambles of challenged independent claims were not limiting amendments. “[I]t is assumed that the preamble language is duplicative of the language found in the body of the claims or merely provides context for the claims, absent any indication to the contrary in the claims, the specification or the prosecution history.” Symantec Corp. v. Comput. Assocs. Int’l, Inc., 522 F.3d 1279, 1289 (Fed. Cir. 2008). The Board indicated that it was not apparent from the prosecution history that the amendments to the preambles “accomplish anything more than routine consistency with amendments concurrently to the body of the claims.”

CaptionCall, L.L.C. v. Ultratec, Inc., IPR2015-01885, Paper 23 (Mar. 16, 2016). The Board denied institution after determining that petitioner’s proposed claim construction did not sufficiently take into account the context of the specification. The claim construction issue was directed to a “when” limitation. Petitioner argued that the “when” limitation allowed for an intermediary action, while patent owner’s construction excluded the intermediary action. While the specification did not exclude petitioner’s construction, the Board determined that the context of the specification, which recommends that actions be automatically performed, supported patent owner’s construction. The burden is on petitioner to demonstrate why the Board should institute review. Since petitioner did not persuade the Board that its construction was consistent with the specification, the Board denied institution.

Microsoft Corp. v. IpLearn-Focus, LLC, IPR2015-00097, Paper 33 (PTAB Mar. 23, 2016). In a final written decision, the Board determined that the asserted references did not disclose a negative limitation recited in the challenged claims. The patent relates to a computer learning system including a detached sensor to monitor a student’s behavior. The challenged claims recite that a processor analyzes a set of measurements “to identify whether the user is not paying attention to content presented by the display.” Petitioner argued that the “not paying attention…” limitation allowed for an interpretation that the user was paying attention to some displayed content but not paying attention to other displayed content. The Board disagreed, determining that the “not paying attention” limitation required the prior art to teach an actual identification of not paying attention.

RF Controls, LLC v. A-1 Packaging Sols., Inc., IPR2014-01536, Paper 20 (PTAB Mar. 28, 2016). In finding several claims to be unpatentable, the Board determined that the recitation of “inventory data,” “inventory tracking region,” and “inventory region” in the preambles of the claims are an intended use that did not limit the scope of the claims. A preamble is not limiting where a structurally complete invention is defined in the claim body and the preamble only states a purpose or intended use for the invention. Nothing in the claims point out any aspect of the manipulation of the data that is unique to “inventory” data versus any other data that would be stored and accessed. As to the tracking aspect of the claim, the claim explicitly states that it is the RFID tag that is tracked, not the inventory item. Nothing in the specification suggests that tracking an RFID tag attached to an inventory item as embodied in the invention is different in any material way to tracking any other kind of item with an RFID tag attached.

Samsung Elecs. Co., Ltd. v. Elm 3DS Innovations, LLC, IPR2016-00386, Paper 24 (PTAB Aug. 11, 2016). Petitioner challenged nine patents of patent owner in nine different IPR proceedings, all of which were instituted. In seven of the proceedings, patent owner requested a Phillips construction because seven of the patents would expire during the proceedings. Patent owner requested a BRI construction for the other two proceedings. The Board rejected petitioner’s request to apply both a BRI construction standard and a Phillips construction standard for the two proceedings in which the patents would not expire during the proceedings. Petitioner argued that applying different claim construction standards to terms in patents in the same patent family could result in affording different meanings to common terms. The Board rejected this argument as speculative, unnecessary and inefficient.

Counsel and Sanctions

The following PTAB cases address issues related to the parties’ counsel, including motions for sanctions or motions relating to disqualify counsel. 37 C.F.R. § 42.11(d) authorize the Board to consider motions for sanctions. Motions for sanctions must be authorized and made separately from any other motion and must describe the specific conduct that allegedly violates 37 C.F.R. § 42.11(c).

VMWare, Inc. v. Clouding Corp., IPR2014-01292, Paper 23 (PTAB Apr. 7, 2015) The Board noted that, in accordance with the duty of candor under 37 C.F.R. § 42.11, counsel for patent owner has a duty to disclose not just the closest primary reference, but also any closest secondary reference(s) the teachings of which sufficiently complement that of the closest primary reference to be material.

Square, Inc. v. Think Comput. Corp., CBM2014-00159, Paper 48 (PTAB Nov. 27, 2015) A motion for sanctions should address three factors: (i) whether a party has performed conduct that warrants sanctions; (ii) whether the moving party has suffered harm from that conduct; and (iii) whether the sanctions requested are proportionate to the harm suffered by the moving party.

John Crane, Inc. v. Finalrod IP, LLC, IPR2016-00521, Paper 5 (PTAB Mar. 29, 2016). The Board denied petitioner’s request to file a motion to disqualify patent owner’s counsel on the basis that patent owner’s counsel prosecuted the reference patent asserted against the challenged patent. The reference patent was assigned to a company acquired by petitioner, and therefore, Petitioner argued that the attorney-client privilege associated with the reference patent transferred to petitioner. Petitioner argued that patent owner’s counsel may have to take positions adverse to petitioner’s patent in defending the challenged patent, which creates a conflict of interest under Rule 109(a) of the PTO’s Rules of Professional Conduct. Disqualification of counsel is resolved on a case-by-case basis. The Board denied petitioner’s request, determining that petitioner did not show that the reference patent is “identical or essentially the same” as the challenged patent, nor that the reference patent and the challenged patent are “substantially related” for purposes of disqualification. Further, petitioner’s argument that patent owner’s counsel will take positions adverse to their former client is speculative.

RPX Corporation v. Applications in Internet Time, LLC, IPR2015-01750, Paper  58 (PTAB May 6, 2016) The Board partly granted petitioner’s motion for sanctions relating to violations of the protective order.  The Board rejected patent owner’s argument that patent owner’s conduct should be excused because the protective order had not yet been entered, particularly because the parties were operating with the understanding that a protective order was in place. The Board determined that petitioner had suffered harm, at least in the disclosure of its confidential information to patent owner’s named counsel in the related district court litigation and a second named advisor to the patent owner regarding the IPRs, who are neither employees of patent owner, nor involved in the IPR proceeding. The Board also determined that petitioner had suffered harm to the extent that it had to expend time and money enforcing clear terms of the protective order that patent owner should have been following without petitioner’s efforts. The Board authorized petitioner to file a motion for attorney fees.

Covered Business Method (CBM)

A covered business method patent is a “patent that claims a method or corresponding apparatus for performing data processing or other operations used in the practice, administration, or management of a financial product or service, except that the term does not include patents for technological inventions.”  37 C.F.R. § 42.301(a).  This definition requires a two-part analysis: (1) whether at least one claim of the patent involves “the practice, administration, or management of a financial product or service,” and (2) whether the patent is directed to a technological invention.”  Id; see also AIA § 18(d)(1).

MotionPoint v. Transperfect Global, Inc., CBM2014-00067, Paper 7 (PTAB June 23, 2014).  A covered business method review will not be instituted for claims which recite a technological invention.  AIA § 18(d)(1).  In determining whether a patent is for a technological invention, the Board must consider whether the claimed subject matter as a whole recites a technological feature that is novel or unobvious over the prior art, and solves a technological problem using a technical solution.  37 C.F.R. § 42.301(b).   The Board was not persuaded by the determination in the related district court proceeding that the claims are novel and nonobvious.  The Board determined that the claims are not directed to a technological invention because the claims, even if they are novel and nonobvious, involve only known prior art technology to accomplish the features of the claimed method.

Groupon, Inc. v. Blue Calypso, LLC, CBM2013-00035, Paper 45 (PTAB Dec. 17, 2014) To determine whether a patent is for a technological invention, the Board considers “whether the claimed subject matter as a whole recites a technological feature that is novel and unobvious over the prior art; and solves a technical problem using a technical solution.” 37 C.F.R. § 42.301(b).  The following claim drafting techniques typically do not render a patent a technological innovation: (a) mere recitation of known techniques, such as computer hardware, communication or computer networks, software, computer-readable storage medium, scanners, display devices or databases, or specialized machines, such as an ATM or point of sale device; (b) reciting the use of known prior art technology to accomplish a process or method, even if that process is novel and non-obvious; and (c) combining prior art structures to achieve the normal, expected, or predictable result of that combination.

Informatica Corp. v. Protegrity Corp., CBM2015-00021, Paper 14 (PTAB June 1, 2015) The Board determined that a patent directed to database security system for protecting data against unauthorized access is eligible for CBM review.  Although the claims did not recite any financial component, the Board determined that the claims are directed to “data processing or other operations that are at least incidental or complementary to the practice, administration, or management of a financial product or service.”  The Board referred to an example in the specification, which describes “that banking is a field where protection against unauthorized access to databases that are used for administering and storing sensitive information is desired.”  Based on this example, the Board determined the patent is CBM-eligible, because banking is a financial activity.

Chicago Mercantile Exchange, Inc. v. 5th Market Inc., CBM2015-00061, Paper 9 (PTAB July 16, 2015) The Board determined that a claim reciting a computer-implemented means-plus-function limitation was directed to a special purpose computer adapted to cover a computer programmed to implement an algorithm that performs the recited function of the challenged claim.  Based on this determination, the Board indicated that the challenged claim is not capable of being performed by just any generic computer that performs generic computer functions.  The means-plus-function limitation encompasses the processing steps illustrated in the patent that amount to a specific algorithm that transforms an otherwise general purpose computer into a special purpose computer programmed to perform the recited function.  When a special purpose computer constitutes the structure that performs the recited function, it imparts a meaningful limitation or adds significantly more to the abstract idea itself.

Square, Inc. v. Unwired Planet, LLC, CBM2015-00148, Paper 14 (PTAB Dec. 28, 2015) The Board indicated that the focus is on the claims for purposes of determining whether a patent is eligible for CBM review.  A patent needs only one claim directed to a covered business method in order for the entire patent to be eligible for CBM review.

Qualtrics, LLC v. OpinionLab, CBM2015-00164, Paper 8 (PTAB Feb. 3, 2016) The Board denied institution of CBM review because petitioner did not establish that the patent was a “covered business method patent” as defined by AIA §18(d)(1).  Petitioner bears the burden to demonstrate that the patent qualifies as a CBM-eligible patent.  The fact that the specification may describe the claimed survey tool as being used for marketing or valuation purposes does not mean that the challenged claims are limited to such uses.  The determination of whether a patent is eligible for CBM patent review focuses on the claims, not the specification.

Motorola Mobility LLC v. Intellectual Ventures I LLC, CBM2015-00174, Paper 8 (PTAB Feb. 9, 2016).  The Board denied institution of CBM review for a patent directed to the electronic transfer of computer files directly between two or more computers, because the claims do not recite features directed to a financial product or service.  Petitioner argued that the specification discloses an example where the computers transfer files based on purchased credits.  However, the Board held that the claims are not limited to this example.  The claims do not recite anything that could be considered “financial in nature.”  The claims as a whole are directed to an area of general utility.

Motorola Mobility LLC v. Intellectual Ventures I LLC, CBM2015-00004, Paper 33 (PTAB Mar. 21, 2016) The Board determined that claims of an electronic content distribution patent are unpatentable under 35 U.S.C. § 101. Rebutting patent owner’s argument that a prior Board decision in Par Pharmaceutical v. Jazz Pharmaceuticals, Case CBM2014-00153, Paper 11 (PTAB Jan. 13, 2015) set forth a new standard for determining whether claims are CBM-eligible, the Board concluded that the petitioner in Par Pharmaceutical had not met its burden of demonstrating that the challenged patent claims a method “used in the practice, administration, or management of a financial product or service.” Thus, the Board’s determination in Par Pharmaceutical was based on a failure of proof by the petitioner. By contrast, petitioner in this proceeding has persuasively explained why the claimed software product for distributing content to a user station was used in the practice, administration or management of a financial product or service, and is therefore directed to a covered business method product. The claimed method steps are not tied to any particular novel machine or apparatus, and petitioner has shown that the claimed steps individually are conventional. When considered as an ordered combination, the components add nothing that is not already present when considered separately.

Travelers Lloyds of Texas Ins. Co. v. Integrated Claims Sys., LLC, CBM2014-00186, Paper 31 (PTAB Mar. 30, 2016). The Board denied patent owner’s motion to dismiss the proceeding if patent owner’s motion to cancel claims 11 and 30 was granted. The Board instituted CBM review because, at the time of institution, the patent contained claims 11 and 30 which make the patent eligible for CBM review. Patent owner filed with its response a motion to amend to cancel claims 11 and 30. Patent owner argued that once claims 11 and 30 are cancelled, the Board lacks statutory authority to review the remaining claims because the remaining claims do not qualify for CBM review. The Board disagreed, indicating that standing is determined at the time of institution. Patent owner did not disclaim claims 11 and 30 prior to institution. Therefore, at the time of institution, the patent was eligible for CBM review.

Qualtrics, LLC v. OpinionLab, Inc., CBM2016-00003, Paper 9 (PTAB Apr. 13, 2016). The Board denied institution of CBM review of a patent directed to soliciting feedback from website users, because petitioner did not establish that the patent qualified as a “covered business method patent” under § 18(d)(1) of the AIA. Petitioner alleges that the claimed invention is directed to a financial product or service because the specification states that the claimed invention may be used in connection with websites that conduct commercial transactions. However, the relevant inquiry is on the claims and whether they are directed to a financial product or service. The claims of the challenged patent are devoid of any terms that could be reasonably argued as rooted in the financial sector or limited to a monetary transaction. Instead, the claims recite a software capability of general utility that crosses many sectors, commercial and non-commercial alike.

Old Republic Gen. Ins. Grp., Inc. Intellectual Ventures II LLC, CBM2015-00184, Paper 7 (PTAB Apr. 15, 2016). The Board denied institution, in part, because petitioner did not demonstrate that the claims do not recite a technological invention. Petitioner focused on the individual components of the patent, without analyzing how each claim of the patent combines these individual components into an ordered whole. Petitioner did not analyze any claim of the patent to assess whether its individual components are arranged or utilized in a unique manner. Such a cursory analysis is insufficient to demonstrate that the claims, as a whole, do not recite a technological feature that is novel and nonobvious.

Epicor Software Corp. v. Protegrity Corp., CBM2015-00006, Paper 54 (PTAB April 18, 2016). The Board determined that a patent directed to database security was eligible for CBM review as being directed to a financial product or service.  The Board does not interpret AIA § 18(d)(1) as requiring the literal recitation of terms of data processing of financial products or services. The challenged patent discloses that protection attributes (i.e., the claimed data processing rules) are used to protect against unauthorized access of a data portion in a database and that banking is a field where it would be desirable to protect against unauthorized access to databases that are used for administering and storing sensitive information. Banking is a financial activity. Although not sufficient on its own, the Board noted that the patent’s classification in the Office’s classification system includes apparatus or methods which are designed for or utilized in the processing of financial data.

Square, Inc. v. Protegrity Corp., CBM2015-00014, Paper 40 (PTAB Apr. 19, 2016). In denying patent owner’s request to rehear the decision instituting CBM review for a patent directed to database security system for protecting data against unauthorized access, the Board indicated that the AIA does not require “the literal recitation of the terms data processing of financial products or services.”  The Board indicated that the claims are directed to “data processing or other operations that are at least incidental or complementary to the practice, administration, or management of a financial product or service.”  The Board referred to an example in the specification which describes “that banking is a field where protection against unauthorized access to databases that are used for administering and storing sensitive information is desired.”  The Board also noted that the specification mentions a “Housing allowance” and a “Social allowance,” which are not “divorced from a financial product or service.”

Google Inc. v. Patrick Zuili, CBM2016-00008, Paper 18 (PTAB Apr. 25, 2016) The Board granted institution of CBM review of a patent directed to a method for identifying invalid clicks under 35 U.S.C. § 101, determining that the patent was directed to a financial product or service.  The Board indicated that the claims are directed to the concept of detecting invalid clicks based on the time between two requests by the same device. In assessing whether the claims are directed to an abstract idea, the Board indicated that it must “ascertain whether the claims implicate a business practice known from the pre-Internet world along with the requirement to perform it on the Internet, or if the claimed solution is necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks.”  The Board determined that while the steps recited in the claims are performed in the Internet environment, they are steps performed by businesses in other environments to ensure that a customer request at hand is a valid request.  Therefore, the Board determined that the claims are directed to an abstract idea.

IBG LLC v. Trading Techs. Int’l, Inc., CBM2016-00009, Paper 20 (PTAB Apr. 28, 2016).  The Board granted institution of CBM review of a patent directed to a graphical user interface (GUI) displaying information related to a commodity and a method of automatically re-positioning the information.  The GUI includes a plurality of columns, some of which include pricing information for commodities.  The Board determined that “the claims encompass processing financial data, associated with a tradeable object, for display or for sending an order to an exchange. This processing of financial data is used in the practice, administration, or management of a tradeable object, which is a financial product. Displaying financial market information for a tradeable object is an activity that is financial in nature.” Further, the Board indicated that “[r]eceiving and displaying market information and sending trade orders to an electronic exchange are activities that are financial in nature.”

iHeartMedia, Inc. v. Impulse Radio, LLC, CBM2016-00010, Paper 10 (PTAB May 9, 2016) The Board granted institution of CBM review of a patent directed to “coordinating the transmission of supplemental digital data to accompany broadcast data” under 35 U.S.C. § 101. The Board determined that the subject matter of the challenged claims, when considered as a whole, is directed to an abstract idea; namely, collecting information, aggregating the information and distributing the information for redistribution. The Board indicated that the “the collection, aggregation, and distribution of information represents a ‘disembodied concept,’ a basic building block of human ingenuity. Thus, we analyze the claims to determine if they ‘incorporate enough meaningful limitations to ensure that the claims cover more than just an abstract idea.'” The Board determined that the claims add only conventional hardware, and do not recite a solution to a specific technical problem.

CoreLogic, Inc. v. Boundary Sols., Inc., CBM2016-00017, Paper 9 (PTAB May 24, 2016).  The Board denied institution on the basis that the patent was not eligible for CBM review.  The claims of the patent are directed to a portal that provides online delivery of parcel-level map data, where the portal is an electronic repository for parcel-level maps and linked attribute data acquired from public and private entities.  Prior to institution, patent owner disclaimed the claims that petitioner identified as reciting financial subject matter.  The Board also rejected petitioner’s argument that the patent’s purpose is to provide data in exchange for money.  The Board determined that the challenged claims did not meet the definition of a CBM-eligible patent under AIA § 18(d)(1).  The Board also determined that petitioner did not sufficiently show why examples of financial transactions in the specification should be linked to the claims.

Apple Inc. and Google Inc. v. Smartflash LLC, CBM2015-00029, Paper 43 (PTAB May 26, 2016).  In a final written decision where the Board determined that the challenged claims are unpatentable under § 101, the Board rejected patent owner’s argument that it was estopped from addressing the patent-eligibility of the claims in view of a district court decision.  In the related litigation, the district court did not determine that the claims are unpatentable under § 101.  Patent owner argued that the Board was estopped from considering the § 101 challenge under the Supreme Court’s B&B Hardware decision.  The Board disagreed, indicating that the B&B Hardware did not apply because the district court applied a different standard—clear and convincing evidence—than the standard that was applied by the Board, i.e., preponderance of the evidence.

Walgreen Co. v. Advanced Marketing Sys., LLC, CBM2016-00013, Paper 6 (PTAB May 26, 2016) The Board granted institution of a CBM review with respect to written description and prior art challenges, but denied institution of a challenge that the claims of the patent, which is directed to a data processing system, are directed to an abstract idea, in view of the Federal Circuit’s decision in Enfish.  The Board was not persuaded that petitioner demonstrated that the challenged claims are directed to an abstract idea.  “We are supported in this conclusion by the recent decision in [Enfish], where the Federal Circuit clarified the application of Alice to computers and software: ‘We do not read Alice to broadly hold that all improvements in computer-related technology are inherently abstract and, therefore, must be considered at step two.’” The Board determined that, like the claims under consideration in Enfish, the challenged claims are directed to an “improvement to computer functionality,” and therefore petitioner has not demonstrated that it is more likely than not to succeed in challenging the patent eligibility of the claims.

Apple, Inc. v. Mirror World Techs., LLC, CBM2016-00019, Paper 12 (PTAB May 26, 2016). The Board denied institution of CBM review of a patent directed to managing personal electronic information under 35 U.S.C. §§101 and 112 ¶ 2, although it found the patent was directed to a financial product or service. The Board disagreed with patent owner’s argument that statements in the specification that are not reflected in claim limitations are not sufficient to establish CBM eligibility. Patent owner’s argument would require the Board to read into the statute the further requirement that the claims be limited by their express language only to financial products or services. That result would be inconsistent with the legislative history of the AIA, which indicates that Congress intended “financial product and service” to be interpreted broadly. The Board determined that petitioner had failed to demonstrate that the claims are not directed to patent-eligible subject matter, finding that the claims solved a number of problems that did not exist in the pre-computer world. Relying on Enfish, the Board determined that the claims did not recite an abstract idea. Under the second step of the Alice test, the Board determined that the claims are necessarily rooted in computer technology.

Informatica Corp. v. Protegrity Corp., CBM2015-00021, Paper 38 (PTAB May 31, 2016). In a final written decision, the Board confirmed that a patent directed to a data security system is directed to a financial service or product and therefore eligible for CBM review. Patent owner argued that none of the claims recite anything that is purportedly directed to a financial product or service. The Board indicated that it did not interpret AIA § 18(d)(1) “as requiring the literal recitation of terms of data processing of financial products or services.” The Board noted that claim 1 recites “controlling the user’s processing of the given data element value in conformity with the collected protection attribute/attributes,” that the specification discloses that protection attributes are used to protect against unauthorized access of a data portion in a database, and that banking is a field where protection against unauthorized access to databases that are used for administering and storing sensitive information is desired. In addition, the Board noted that, although not sufficient on its own, the patent is classified in a class that has traditionally been associated with business method patents. The Board determined that the claims are unpatentable under § 101. “[T]he claims are directed to the abstract idea of determining whether access to data should be granted based on whether one or more rules are satisfied…. Storing data and associated rules in separate databases is nothing more than routine data gathering and does not transform the abstract idea into a patent-eligible invention.”

Google Inc. v. Zuili, CBM2016-00021, Paper 11 (PTAB June 1, 2016). The Board granted institution of CBM review, determining that the claims of the patent are directed to a financial service or product. The Board indicated that “[a]lthough the recitation of a ‘pay-per-click system’ is in the claim’s preamble, it cannot be ignored because it is necessary to give life, meaning, and vitality to the claim.” The Board determined that even if the pay-per-click-system is not regarded as an element in the claim, that would not lead to a different result in determining whether the claims are directed to a financial service or process. Citing the Federal Circuit’s Versata decision, the Board indicated that “the financial product or service requirement of the [CBM] determination can be met by a wide range of ‘finance-related activities’ and does not require activity that is directly financial in itself.”

Epicor Software Corp. v. Protegrity Corp., CBM2015-00030, Paper 39 (PTAB June 2, 2016). The Board determined that the claims of a data security system patent were eligible for CBM review and directed to an abstract idea. Patent owner argued that claim 8 of the patent was not directed to a financial product. However, the Board cited its previous determination from another CBM review that the claims of the patent are CBM eligible, and noted that only one claim of a patent needs to be shown to be directed to a CBM patent for institution of a proceeding to commence. The Board determined that the challenged claim is directed to the abstract idea of control of user processing of database based on attributes in a catalogue. The challenged claim is not directed to a specific improvement to the way computers operate. Storing data and associated rules in separate databases is nothing more than routine data gathering and does not transform the abstract idea into a patent-eligible invention.

Nautilus Hyosung Inc. v. Diebold, Inc., CBM2016-00034, Paper 9 (PTAB Aug. 22, 2016). The Board granted institution of CBM review for a patent directed to an automated banking machine under 35 U.S.C. §§ 101, 102 and 103. The Board determined that the patent includes claims directed to a financial transaction or processing, and that the patent was not directed to a technological invention. The Board specified that “[a]lthough the claimed steps of the challenged patent may be an allegedly novel and nonobvious process,…the technological features of the claimed steps are directed to using known technologies.” The subject matter of a challenged claim, as a whole, does not require any specific, unconventional software, computer equipment, processing capabilities, or other technological features to produce the required functional result.

Google Inc. v. At Home Bondholders’ Liquidating Trust, CBM2016-00036, Paper 12 (PTAB Aug. 22, 2016). The Board denied institution of CBM review because the challenged patent, which is directed to a system for storing information on a computer network, provides a technological innovation. The claims of the patent address the technical problems that arise when requests for banners on a caching network are blocked by caches, while avoiding problems created by requiring the banner information to be retransmitted across the network each time the banner is requested by a user’s terminal. Merely pointing out that the claimed functions and recited technology were independently known in the art does not show that the solution of the patent addressing these problems was not novel or unobvious. Regardless of whether a generic computer terminal or other computer technology could perform the recited functions, it is the combination of the method steps in the patent that solves the identified problems and is novel and nonobvious. The claimed processes are technical solutions to technical problems because providing a system that achieves the advantages of caching while at the same time ensuring reliable receipt of signals over the Internet is a problem unique to the technology implemented in the Internet’s computing environment.

Interactive Brokers LLC v. Chart Trading Development, LLC, CBM2016-00038, Paper 14 (PTAB Aug. 23, 2016). The Board granted institution of CBM review for a patent directed to a method for providing an interactive graphical representation of a market under 35 U.S.C. §§ 101 and 103. The challenged claims are directed to displaying information in a format that is convenient for the user to provide an instruction. However, the claims do not identify or recite any technical problem, or claim any technical solution. The claims do not recite, nor does the specification describe, features concerning the basic computer functions associated with achieving the recited configuration. Thus, for purposes of the institution decision, the Board indicated that it was persuaded that the focus of the claims is not on an improvement to computer functionality, but on independently abstract ideas that use computers as tools.

Demonstratives

The parties may use demonstrative exhibits at the oral hearing.   37 C.F.R. § 42.70(b). The demonstratives may not contain any evidence or arguments that was not previously presented during the trial.

CBS Interactive Inc. v. Helfrich Patent Licensing, LLC, IPR2013-00033, Paper 118 (PTAB Oct. 23, 2013). This Order provides an explanation of the rules for demonstrative exhibits at oral hearing.   Demonstratives may not contain any new arguments or new evidence. The demonstratives may only contain arguments and evidence that were presented in the parties’ pleadings prior to oral hearing. Different characterizations of the evidence and different inferences drawn from the evidence are new arguments. The burden on showing that a demonstrative slide does not present new argument or new evidence is on the party presenting the slide.

EMC Corp. v. Personal Web Techs., LLC, IPR2013-00085, Paper 70 (PTAB Dec. 13, 2013). At a final oral hearing, a party may rely upon evidence that has been submitted previously in the proceeding and only may present arguments relied upon in the papers submitted previously. Demonstrative exhibits may not include new evidence or arguments.  The Board denied authorization for petitioner to use a CD-ROM at oral hearing because a physical copy of the CD-ROM was not in evidence and was not served on patent owner.  Introducing new evidence at this late juncture—when the trial issues had been briefed fully by both parties—would prejudice patent owner, who would not have the opportunity to respond or challenge the authentication of the CD-ROM.  The Board denied authorization for patent owner to file a motion to exclude any of petitioner’s demonstrative slides that are not discussed substantively at the oral hearing.  Demonstrative exhibits are not evidence.  Unless patent owner can show that the demonstratives include new evidence or arguments, exclusion is unnecessary.

St. Jude Medical v. The Bd. of Regents of the Univ. of Mich., IPR2013-00041, Paper 65 (PTAB Jan. 27, 2014).  Demonstrative exhibits are not evidence, and as such, the exhibits cannot add new evidence to the record of the proceeding.  Demonstrative exhibits are not an opportunity for additional briefing.   Demonstrative exhibits cannot rely on evidence that, although it is in the record, was never specifically discussed in any paper before the Board.

International Business Machines Corp. v. Intellectual Ventures II LLC, IPR2015-00089, Paper 41 (PTAB Jan. 14, 2016) The Board precluded patent owner from using five demonstrative slides at oral hearing because the slides included testimony from the declaration of patent owner’s expert that were not cited in the patent owner response or any other paper. Despite Petitioner’s acknowledgement that patent owner made arguments similar to those proposed in the slides, the Board determined that paragraphs in the declaration not cited in the patent owner response could not be used in demonstratives, citing CBS Interactive.

J Squared, Inc. d/b/a Univ. Loft Co. v. Sauder Mfg. Co., IPR2015-00774, Paper 30 (PTAB Apr. 4, 2016).  The Board denied patent owner’s request to bring physical specimens of its commercial product and of petitioner’s commercial product to the oral argument for inspection by the Board.  “A trial before the Board is conducted on paper. By the time the proceeding reaches final oral argument, nothing new can be presented, no new evidence, no new arguments. . . . [I]n light of the fact that Patent Owner has not requested introduction of the physical commercial chairs into the record, such introduction at this stage of the proceeding would need to be approved through a motion for supplemental information. Patent Owner has not filed such a motion.  We do not, by this order, provide authorization for Patent Owner to file a motion to submit this supplemental information, because Patent Owner was clearly in possession of these physical samples at the time it filed its Patent Owner Response, and thus, Patent Owner likely cannot now show why the supplemental information reasonably could not have been obtained earlier, as required by 37 C.F.R. § 42.123(b).”

Medtronic, Inc. v. Barry, IPR2015-00780, Paper  48 (PTAB May 13, 2016)The Board rejected petitioner’s argument that patent owner, in its demonstratives, could not cite to a passage of an exhibit that was not cited in a pleading.  The Board indicated that petitioner was not prejudiced by citing to the passage because the exhibit was cited.  The Board also permitted patent owner to, in its demonstratives, cite to testimony of patent owner’s expert that is consistent with or provides context to arguments already made by patent owner or that disputes characterizations made by petitioner during the cross-examination or in the petitioner reply, as long as the cited testimony does not “expand” the arguments made by patent owner in its response.

Inline Packaging, LLC v. Graphic Packaging Int’l, Inc., IPR2015-01609, Paper 49 (PTAB Sept. 27, 2016).  The Board denied petitioner’s motion to strike patent owner’s proposed demonstratives as allegedly outside the scope of proper demonstratives.  The Board indicated that, while it agreed with petitioner that patent owner’s slides did not appear to be fully supported by the evidence of record, it was unwilling to strike the demonstratives two days before the oral hearing.  Due to the time constraints, the Board indicated that it was not in a position to determine definitively, in a timely manner, whether patent owner’s positions are properly responsive to petitioner’s assertions.  The Board informed the parties that, in rendering its final written decision, the Board will exclude from consideration any slide of patent owners that are outside the scope of a proper demonstrative slide.  “To hold otherwise would allow Patent Owner to present new arguments at this late juncture without providing Petitioner an adequate opportunity to respond. Indeed, the proper procedure to present such new arguments in this proceeding would have been to request to file a sur-reply earlier in the proceeding.”

Discovery

Discovery is limited in AIA trials, as compared to district court and ITC litigation.  There is automatic deposition of witnesses submitting declarations or affidavits, and automatic discovery of contradictory evidence.  Additional discovery must be requested by motion and demonstrated to be “in the interest of justice” for IPR proceedings.  For CBM or PGR proceedings, the proponent for such additional discovery must show “good cause,” and the additional discovery is limited to evidence directly related to a factual assertion of the opposing party. 35 U.S.C. §§ 316(a)(5) and 326(a)(5); 37 C.F.R. § 42.51.

Garmin Int’l, Inc. v. Cuozzo Speed Techs. LLC, IPR2012-00001, Paper No. 26 (PTAB, Mar. 5, 2013) (precedential).  The Board provided guidance on the requirements for requesting discovery.  The Board indicated that the following five factors are considered in determining whether a discovery request meets the required “in the interest of justice” standard. (1) The mere possibility of finding something useful, and mere allegation that something useful will be found, are insufficient to demonstrate that the requested discovery is necessary in the interest of justice. (2) Asking for the other party’s litigation positions and the underlying basis for those positions is not necessary in the interest of justice.  (3) Information a party can reasonably figure out or assemble without a discovery request would not be in the interest of justice to have produced by the other party.  (4) The questions should be easily understandable.  (5) The requests must not be overly burdensome to answer, given the expedited nature of IPR.

Bloomberg Inc. et al. v. Markets-Alert Pty Ltd., CBM2013-00005, Paper 32 (PTAB May 29, 2013) (precedential). The Board noted that in IPRs, an interests of justice standard is employed in granting additional discovery. In PGRs and CBMS, a good cause standard is applied. On balance, the interests of justice standard is slightly higher than the good cause standard, to reflect that the scope of issues which could be raised by a petitioner in an IPR is limited to grounds based on patents or printed publications. In this order, the Board adopted the Garmin discovery factors (1)-(5) for PGR and CBM proceedings, noting that the Board slightly modifies each of the five factors set forth in Garmin, for determining whether requested discovery is necessary for good cause.

Apple Inc. v. Achates Reference Publishing, Inc., IPR2013-00080, Paper 66 (PTAB Jan. 31, 2014). The Board authorized petitioner’s motion for additional discovery directed to emails exchanged between patent owner’s declarants.  With its response, patent owner submitted declarations from two declarants who stated that they relied on the other individual’s declaration with respect to prior art references at issue in the proceeding.  During cross-examination, the declarants indicated that they relied on email communications with the other individual in forming their opinions regarding the alleged patentability of the claims over that prior art.   The Board authorized petitioner’s motion, finding that the testimony indicates more than a mere possibility that something useful will be discovered, and that petitioner’s request is narrowly tailored and not overly burdensome.  Determining the factual basis for a declarant’s opinions is a proper inquiry during discovery, and permitting an opposing party to do so is important to ensure the party has a fair opportunity to challenge those opinions.

Hughes Network Systems, LLC v. California Institute of Technology, IPR2015-00059 (PTAB Dec. 30, 2015) The Board denied petitioner’s motion for additional discovery seeking to obtain information from patent owner on the public availability of an asserted paper cited by patent owner during prosecution of the patent.  The Board instituted trial, finding that petitioner had made a threshold showing of public availability of the paper.  The fact that the Board instituted trial is not dispositive of the issue of whether a particular reference document qualifies as a printed publication.  The Board rejected petitioner’s argument that patent owner should have produced information on the public availability of the reference under the routine discovery provisions of 37 C.F.R. § 42.51(b)(1)(iii) as information inconsistent with a position advanced by patent owner.  Denying the motion, the Board determined that information on the public availability of a relied-upon reference is not a substantive position for which the routine discovery provisions are intended, and that petitioner had not demonstrated that the requested discovery is in the interest of justice, because petitioner could demonstrate public availability of the reference by other means.  Arguments pointing to a deficiency in petitioner’s case do not impose an obligation on the part of patent owner to provide evidence supplementing that provided by petitioner.

CaptionCall, L.L.C. v. Ultratec, Inc., IPR2015-00636, Paper 20 (PTAB Jan. 26, 2016) The Board denied authorization for patent owner to file a motion requesting additional discovery regarding the facts and materials on which petitioner’s declarant relied in forming his opinions of unpatentability.  In particular, patent owner sought drafts of the claim charts that are contained in the petition, on the basis that the declarant testified that he relied upon claim charts in the petition in forming his opinions.  The Board denied patent owner’s request as being untimely and because patent owner did not demonstrate that it would find something useful in investigating drafts of the claim charts.  Patent owner requested discovery two months after filing its response.  Therefore, patent owner lacks an opportunity to file a substantive paper addressing the drafts, which weighs against the possibility that patent owner would find something useful in the drafts.

Luv N’ Care, Ltd. v. Munchkin, Inc., IPR2015-00872, Paper 17 (PTAB Jan. 29, 2016).  The Board granted petitioner’s motion to compel testimony and documents from a third party regarding information necessary to establish that alleged prior art products were on-sale prior to the critical date of the patent and therefore prior art to substitute claims that are the subject of patent owner’s motion to amend. In accordance with 37 C.F.R. § 42.52(a), the Board required petitioner, in its motion, to (1) identify, as specifically as possible, what testimony and/or documents it seeks from the third party, (2) explain why such information is relevant and needed at this stage of the proceeding, and (3) describe all efforts made by petitioner to date to obtain the information it seeks outside the use of a subpoena. The Board granted petitioner’s motion (Paper 24, Feb. 19, 2016), determining that the information sought will be useful in determining the prior art status of the depicted products.

CaptionCall, L.L.C. v. Ultratec, Inc., IPR2015-00636, Paper 42 (PTAB Feb. 23, 2016) The Board denied patent owner’s motion for additional discovery seeking information and documents concerning whether petitioner properly identified all RPIs in its petition.  The Board determined that patent owner’s discovery requests were speculative and not in the interests of justice.  Patent owner is investigating petitioner’s compliance with its identification of RPIs, a process expressly rejected by the Office during adoption of the AIA rules.  Patent owner’s discovery requests cast a broad net with only the mere hope of finding something relevant.  The nature of patent owner’s discovery requests weighs against finding its requests additional discovery is in the interests of justice.

Prong, Inc. v. Sorias, IPR2015-01317, Paper 17 (PTAB Feb. 29, 2016) The Board granted patent owner authorization to file a motion for additional discovery regarding secondary considerations of nonobviousness, including material related to the sale and marketing of petitioner’s products, as well as material related to certain efforts to license the application that gave rise to the patent-at-issue. Petitioner argued that patent owner could not show nexus between petitioner’s product and the patent-at-issue. The Board determined that briefing is warranted, and therefore authorized patent owner to file a motion for additional discovery and authorized petitioner to file an opposition to the motion.

Instradent USA, Inc. v. Nobel Biocare Services AG, IPR2015-01786, Paper 22 (PTAB Mar. 22, 2016). The Board granted petitioner authorization to file a motion for additional discovery pertaining to the preparation, printing, receipt, and distribution of catalogs relevant to the public accessibility of relied-upon reference. Patent owner argued that this discovery was already sought during the related ITC litigation, and thus should not be subject to additional discovery in the IPR proceeding. The Board determined that further briefing on this issue is warranted, and thus authorized petitioner to file a motion for additional discovery. The motion shall identify the specific discovery requests sought, explain why such discovery is narrowly tailored and not a “fishing expedition,” and further address any prior efforts to obtain that discovery in the related ITC litigation.

Argentum Pharmaceuticals LLC v. Research Corp. Techs., Inc., IPR2016-00204, Paper 12 (PTAB Apr. 6, 2016). The Board authorized petitioner to file a motion to compel routine discovery under 37 C.F.R. § 42.51(b)(1)(iii) of information allegedly inconsistent with a position advanced by patent owner in its preliminary response with respect to an asserted reference. In the preliminary response, patent owner asserted that petitioner did not demonstrate that a relied-upon thesis is a printed publication. Petitioner asserted that patent owner possesses, but has not filed and/or served, relevant information that is inconsistent with patent owner’s position regarding the public availability of the thesis. The Board determined briefing on the issue was warranted. The Board required petitioner to show that the documents at issue contain specific information that is inconsistent with an explicit position advanced by patent owner.

AMX, LLC v. Chrimar Sys., Inc., IPR2016-00569, Paper 8 (PTAB Apr. 14, 2016). The Board authorized patent owner to file a motion for additional discovery regarding real parties-in-interest.  Patent owner argued that certain parties may be obligated to indemnify petitioner in connection with an ongoing district court case, and, thus, may have funded, directed, or controlled the petition.  The Board authorized patent owner to file the motion, despite petitioner’s arguments that, even if such indemnification obligations exist, none of the identified parties funded, directed, or controlled the petition.  The Board required patent owner to identify in its motion the discovery being requested and explain why the discovery is necessary in the interest of justice, and to specifically identify the evidence already in patent owner’s possession tending to show beyond speculation that in fact something useful will be uncovered by the requested discovery.

Arkema France v. Honeywell Int’l Inc., IPR2015-00915, Paper 35 (PTAB Apr. 1, 2016).  The Board partly denied petitioner’s motion for additional discovery pertaining to patent owner’s contention that the inventors conceived of, and reduced to practice, the invention claimed in the challenged patent before the dates of the asserted references. Petitioner asserts that it requires the deposition of the first-named inventor of the patent, who is not a declarant, because she authored most of the documents upon which patent owner relies to show conception, diligence, and reduction to practice. The Board agreed with patent owner that petitioner did not show sufficiently that the deposition request meets the “in the interest of justice” standard. Petitioner has not explained adequately what information the first-named inventor can provide that petitioner cannot generate from patent owner’s declarants. The mere fact that the first-named inventor authored documents upon which patent owner is relying to show conception, diligence, and reduction to practice is not enough to establish that petitioner needs the first-named inventor’s testimony to support its contention that patent owner’s invention does not antedate the asserted prior art.  The Board granted petitioner’s motion for additional discovery to produce the instructions on how to perform experiments, because the details of the experiments are useful since patent owner relies on the instructions to show reduction to practice.

Snap-On Inc. v. Milwaukee Electric Tool Corp., IPR2015-01242, Paper 22 (PTAB Apr. 1, 2016) The Board denied patent owner’s motion for additional discovery from two co-petitioners in related proceedings relevant to secondary considerations of nonobviousness. The co-petitioners are not petitioners in the instant proceeding. The Board was not persuaded that patent owner established entitlement to the relief requested, as to the two co-petitioners in related IPRs because neither entity is a party in the instant proceeding. The appropriate mechanism by which a party may secure discovery from a non-party in IPR is by requesting authorization from the Board under 37 C.F.R. § 42.52(a) to apply for a subpoena from a district court under 35 U.S.C. § 24.

AMX, LLC v. Chrimar Systems, Inc., IPR2016-00569, Paper 18 (PTAB May 19, 2016). The Board denied patent owner’s motion for additional discovery regarding whether petitioner identified all real parties-in-interest (RPI) in its petition. Patent owner argued that it has evidence which tends to show that information favorable in substantive value to patent owner on the RPI issue will be uncovered by the requested discovery. Patent owner referred to evidence indicating that petitioner may have indemnification agreements with third parties. “Patent Owner, however, does not identify any evidence suggesting that those indemnification agreements would be useful in demonstrating that the third parties direct, control, or fund these proceedings….Moreover, we are not persuaded, on this record, that the existence of indemnification agreements would indicate control over these proceedings by the indemnitor.”

Discretion to Institute Under § 325(d)

In determining whether to institute an IPR, CBM or PGR proceeding, the Board may take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office.

ZTE Corp. v. ContentGuard Holdings, Inc., IPR2013-00454, Paper 12 (PTAB Sept. 25, 2013) (informative).  The Board exercised its discretion to deny institution under § 325(d) for a second petition against several claims that were denied review in response to a first petition filed by the same petitioner.  In addition to petitioner’s reliance on the same or substantially the same prior art and arguments presented in the first petition, the Board indicated that the timing of the filing of the second petition weighed against institution.  Petitioner filed the second petition after the one-year statutory bar under § 315(b) for petitions filed in the absence of a motion for joinder under § 315(c), and the Board denied petitioner’s motion for joinder because the previously instituted trial had been terminated.  The Board expressed concern about encouraging, unnecessarily, the filing of petitions which are partially inadequate.  A decision to institute review on some claims should not act as an entry ticket, and a how-to guide, for the same petitioner who filed an unsuccessful joinder motion, and is outside of the one-year statutory period, for filing a second petition to challenge the same claims which it unsuccessfully challenged in the first petition.

Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd., IPR2013-00324, Paper 19 (PTAB Nov. 21, 2013) (informative). The Board exercised its discretion under § 325(d) to deny institution for a second petition after instituting an IPR proceeding in response to an earlier petition filed by the same petitioner against the same claims.  Patent owner did not file a preliminary response for the second petition.  After institution of the earlier proceeding, patent owner filed a conditional motion to amend.  “Congress did not mandate that an inter partes review must be instituted under certain conditions. Rather, by stating that the Director—and by extension, the Board—may not institute review unless certain conditions are met, Congress made institution discretionary.  In determining whether to institute an inter partes review, the Board may ‘deny some or all grounds for unpatentability for some or all of the challenged claims.’ 37 C.F.R. § 42.108(b); see 35 U.S.C. § 314(a).”  The Board indicated that the grounds of challenge in the second petition are substantially similar to the grounds presented in the first petition.  Although the second petition relied on a new reference, the Board indicated that the teachings of that reference are substantially identical to the teachings of the references asserted in the earlier petition. The Board also noted that petitioner did not provide any justification for filing the second petition other than becoming aware of the new reference asserted in the second petition after filing the earlier petition, and that petitioner did not distinguish any teaching of the new reference compared to the references asserted in the earlier petition.

Ecowater Systems LLC v. Culligan Int’l Co., IPR2013-00155, Paper 18 (PTAB June 24, 2014).  The Board disagreed with patent owner’s argument that the petition was improper under § 325(d).  Patent owner argued that one of the references relied upon by petitioner is cumulative to a reference considered by the Examiner during prosecution of the challenged patent.  The Board stated that § 325(d) gives it the discretion whether to deny a petition that presents the same or substantially the same prior art or arguments, but the Board is not required to deny a petition for this reason.  The Board also determined that the relied-upon reference was not the same or cumulative to the reference considered during prosecution.

Unilever, Inc. v. The Procter & Gamble Co., IPR2014-00506, Paper 17 (PTAB July 7, 2014) (informative) The Board exercised its discretion under § 325(d) to deny institution for a second petition against several claims that were denied review in response to a first petition filed by the same petitioner.  In the second petition, petitioner relied on thirteen references, six of which were raised in the first petition.  The Board noted, however, that petitioner did not present any argument or evidence that the seven newly cited references were not known or available to petitioner at the time of filing the first petition.  The Board also indicated that petitioner advanced substantially the same obviousness arguments with different references substituted for the same contentions of obviousness presented in the earlier petition.  The Board determined that petitioner used the prior institution decision to bolster challenges that were advanced, unsuccessfully, in the earlier petition.  In denying rehearing (Paper 25), the Board indicated that authorizing such serial petitions would allow petitioners to unveil strategically their best prior art and arguments in subsequent petitions, using the Board’s decisions on institution as a roadmap, until a ground is advanced that results in review—a practice that would tax Board resources, and force patent owners to defend multiple attacks.

Prism Pharma Co., Ltd. v. Choongwae Pharma Corp., IPR2014-00315, Paper 14 (PTAB July 8, 2014) (informative).  The Board exercised its discretion under §325(d) to deny institution on the basis that the issue of whether the challenged claims are entitled to the earlier date of a prior application was decided during prosecution.  Petitioner argued that the subject matter recited in the challenged claims does not have written support in the parent application and are therefore anticipated by an intervening reference.  The Board indicated that the issue of the priority date of the challenged claims was decided by the Examiner and his supervisor during prosecution.  Based on this decision, the Board concluded that the same prior art and substantially the same arguments were previously presented to the Office during prosecution, and denied institution under § 325(d).

SAP Am., Inc. v. Clouding IP, LLC, IPR2014-00308, Paper 8 (PTAB July 10, 2014) The Board declined to exercise its discretion under § 325(d) to deny institution for a combination of two references that patent owner alleged to be substantially similar to a combination that was considered during prosecution.  Patent owner argued that the examiner had considered the primary reference in combination with an earlier version of the secondary reference asserted in the petition.  The Board indicated that petitioner had “presented different arguments and new supporting arguments that were not before the examiner, shedding a different light on the” asserted combination. Therefore, the Board declined to deny institution based on § 325(d).

Medtronic, Inc. v. Nuvasive, Inc., IPR2014-00487, Paper 8 (PTAB Sept. 11, 2014) (informative) Petitioner had previously filed two other petitions against the same patent.  The Board denied institution for the first petition, while authorizing institution for the second petition.  Petitioner then filed a third petition to remedy the deficiencies in the first petition and to provide additional arguments and evidence for one of the relied-upon references.  The Board exercised its discretion to deny institution under § 325(d) for the third petition for two reasons.  First, the Board noted that the trial for the second petition was instituted seven months prior for the same claims challenged in the third petition, and petitioner did not provide sufficient reasoning as to why the new grounds are not redundant other than to state that the grounds are based on different references.  Second, the third petition relies on the same prior art references and substantially the same arguments as presented in the first petition.

Butamax Advanced Biofuels LLC v. Gevo, Inc., IPR2014-00581, Paper 8 (PTAB Oct. 14, 2014) The Board exercised its discretion to deny institution under § 325(d) for a second petition asserting grounds of unpatentability that were denied review in response to a first petition by the same petitioner.  The Board determined that one of the challenged grounds, which was based on the same prior art relied upon in the first petition, was effectively an attempt to request rehearing of a prior decision instituting trial, outside the required time period for such requests.  The Board determined that the other challenged grounds involved attempts to cure the deficiencies in the first petition by substituting new references which petitioner did not contend were unknown or unavailable to it at the time the first petition was filed.

Uniliver, Inc. v. The Proctor & Gamble Co., IPR2014-00628, Paper 21 (PTAB Oct. 20, 2014) The Board exercised its discretion under § 325(d) to deny institution for a second petition filed by the same petitioner to challenge the same claims that were challenged in a first petition.   The second petition was filed after the Board denied the first petition.   In the second petition, petitioner did not address § 325(d) or compare the prior art or arguments applied in the two petitions.  Although the second petition relied upon different prior art references than those asserted in the first petition, the Board agreed with patent owner that both petitions apply prior art that present “substantially the same” argument regarding anticipation and obviousness of the challenged claims.  The Board also noted that prior art asserted in the second petition are listed on the face of the challenged patent and therefore were “previously presented to the Office.”  In addition, the Board noted that petitioner did not argue that other references asserted in the second petition were unknown or unavailable at the time of filing the first petition, which supports a reasonable inference that those references were known and available to petitioner when it filed the first petition.  “[T]he interests of fairness, economy, and efficiency support declining review—a result that discourages the filing a first petition that holds back prior art for use in successive attacks, should the first petition be denied.”

CustomPlay, LLC v. ClearPlay, Inc., IPR2014-00783, Paper 9 (PTAB Nov. 7, 2014).  The Board exercised its discretion to deny institution under § 325(d) for a second petition filed by the same petitioner against the same patent, because the second petition presents substantially the same prior art and substantially the same arguments as the first petition.  A decision to institute review on some claims in a first IPR should not act as a how-to guide for the same petitioner filing a second petition challenging claims that it unsuccessfully challenged in the first petition or claims that it reasonably could have challenged in the first petition.

Biodelivery Sciences Int’l, Inc. v. RB Pharmaceuticals Ltd., IPR2014-00998, Paper 12 (PTAB Dec. 19, 2014) The Board exercised its discretion under § 325(d) to deny institution for a second petition filed by the same petitioner to challenge the same claims that were challenged in a first petition.  In response to the first petition, the Board granted institution for a first group of challenges based on a first set of references, but denied institution for a second group of challenges based on a second set of references on the basis that the second group of challenges were cumulative to the first group of challenges.  The second petition was filed with challenges similar to the second group of challenges that were denied institution in response to the first petition.  In the challenges of the second petition, petitioner newly relied upon two references that were not formally included in the second group of challenges in the first petition.  The Board determined that while the first petition did not formally include one of the new references in the challenged grounds from the first-filed petition, that reference was cited in the claim chart in the first petition, and the other new reference is a family member of a reference that was relied upon in the first petition.  The Board denied institution on the basis that petitioner had recycled previous art and arguments.

Amgen, Inc. v. Abbvie Biotechnology Ltd., IPR2015-01514, Paper 9 (PTAB Jan. 14, 2015) The Board declined to exercise its discretion under § 325(d) to deny the petition in response to patent owner’s argument that the same or substantially the same prior art or arguments were previously presented to the Office.  The Board noted, however, that the “same arguments” advanced by petitioner were advanced during prosecution of claims of related applications, not the claims at issue in the challenged patent.

Samsung Electronics, Co., Ltd. v. Rembrandt Wireless Techs., LP, IPR2015-00118, Paper 14 (PTAB Jan. 28, 2015).  The Board exercised its discretion under § 325(d) to deny institution for a subsequent petition filed to overcome the deficiencies in grounds of unpatentability that were denied in an earlier petition.  The Board determined that the sole difference between what petitioner presents in the subsequent petition is the presence of additional reasoning to support the assertion of unpatentability over the same prior art.  The Board expressed concerns that permitting second chances would tie up the Board’s limited resources. The Board indicated that it was not apprised of a reason that merits a second chance. Petitioner simply presents an argument now that it could have made in the earlier petition, had it merely chosen to do so.

Schrader-Bridgeport Int’l v. Wasica Finance GmbH, IPR2015-00272, Paper 17 (PTAB June 1, 2015) The Board exercised its discretion to deny institution for claims that were being challenged in two other IPR proceedings in which oral hearings had already been conducted.  The same petitioners were involved in one of the prior proceedings.  The Board noted that petitioner did not address any of the differences between the petitions.  Even if the arguments in the proceedings differ in a meaningful way, petitioner did not provide an explanation as to why the new arguments could not have been presented in one of the earlier petitions.  The Board indicated that instituting review in the current proceeding would effectively extend review of the patent for another year, particularly when final decisions in the earlier IPRs were due in approximately one month.

Volkswagen Grp. of Am., Inc. v. Velocity Patent LLC, IPR2015-00276, Paper 8 (PTAB June 1, 2015) The Board declined to exercise its discretion under § 325(d) to deny institution in response to patent owner’s argument that petitioner presented substantially similar prior art or arguments that petitioner presented when requesting ex parte reexamination of the patent.  In the petition, petitioner relied upon a reference that was not asserted in the reexamination to teach limitations of numerous challenged claims.  Although the reference was listed by patent owner in an Information Disclosure Statement filed in the reexamination, it was not argued by petitioner in the reexamination request, or substantive addressed or even cited by the examiner.  The reference was therefore not meaningfully considered in the reexamination.

Travelocity.com L.P. v. Cronos Technologies, LLC, CBM2015-00047, Paper 7 (PTAB June 12, 2015) The Board exercised its discretion under § 325(d) to deny institution on the basis that petitioner presented substantially the same arguments and prior art in an earlier petition that was denied institution.  Requiring patent owner to respond to multiple assertions of substantially the same arguments based on the same references is inconsistent with the Board’s construction of the rules to ensure “the just, speedy, and inexpensive resolution of every proceeding.” 37 C.F.R. § 42.1(b).  Moreover, a decision on a petition for CBM review is not simply a part of a feedback loop by which a petitioner may perfect its challenges through a subsequent filing.

Atoptech, Inc. v. Synopsys, Inc., IPR2015-00760, Paper 14 (PTAB July 21, 2015) The Board exercised its discretion under § 325(d) to deny institution because petitioner used the Board’s claim construction determination in the institution decision of an earlier IPR proceeding to prepare new arguments and new reasoning to challenge the claims.  Petitioner argued that it could not have anticipated the Board’s prior claim construction. The Board disagreed, indicating that the alleged unforeseen construction by the Board was simply a refusal to accept petitioner’s proposed construction.  The Board indicated that petitioner was requesting a second chance to address the unpatentability of the same claims over the same prior art at issue in the earlier petition.  Permitting second chances without constraint undermines judicial efficiency by expanding the Board’s resources on issues that were not presented adequately the first time around.  The instant petition presents arguments that reasonably could have been made in the prior petition but were not.

LG Elecs., Inc. v. ATI Techs. ULC, IPR2015-00327, Paper 15 (PTAB Sept. 2, 2015) The Board exercised its discretion under § 325(d) to deny institution because petitioner had relied on overlapping arguments using two common references in another petition filed against the same patent, even though different primary references were relied on in the two petitions.  Petitioner argued that § 325(d) should not apply because the two petitions were filed on the same day, and § 325 states “the same or substantially the same arguments were presented to the Office.” The Board stated that its discretion would be circumvented if an unlimited number of petitions were filed on the same day, and that petitioner’s argument was contrary to the legislative history in giving the Board discretion to address “challenges that are cumulative to or substantially overlap with issues previously considered by the Office with respect to the patent.”

NetApp Inc. v. Crossroads Systems, Inc., IPR2015-00772, Paper 12 (PTAB Sept. 3, 2015).  The Board exercised its discretion under § 325(d) to deny institution because petitioner had presented the same or substantially the same arguments in an earlier petition.  The earlier petition was denied for not addressing certain claim limitations and for improperly relying on incorporation by reference of explanation presented in a supporting declaration.  Petitioner challenged the same claims on the same grounds in the later-filed petition while correcting the deficiencies in the earlier petition.  The Board indicated that petitioner was effectively asking for a second chance at arguing unpatentability of the same claims based on the same combinations of prior art presented in the earlier petition.  The Board also noted that the later petition was filed shortly after the previous petition was denied, allowing petitioner to use the prior institution decision as a guide for preparing the later petition.  These considerations weigh in favor of the Board exercising its discretion under § 325(d) to deny the later petition.

Universal Remote Control, Inc. v. Universal Elecs., Inc., IPR2014-01084, Paper 26 (PTAB Dec. 18, 2015).  In a final written decision, the Board disagreed with patent owner’s argument that it should deny the petition under §325(d) on the basis that the Examiner previously considered a reference asserted in an anticipation challenge.  The Board noted that the reference is cited in the background section of the patent, but the reference does not appear in the list of references cited on the face of the patent.  The prosecution history also does not indicate that the Examiner expressly considered the reference.

Funai Elec. Co., Ltd. v. Gold Charm Ltd., IPR2015-01491, Paper 15 (PTAB Dec. 28, 2015).  The Board exercised its discretion under § 325(d) to deny institution for an anticipation challenge that was considered during prosecution of the application.   The Board noted that petitioner relied upon the “same textual portions and figure elements” of the asserted reference that the Examiner relied upon in an Office Action rejecting the claims.   While acknowledging that petitioner disagreed with the Examiner’s conclusion, the Board indicated that petitioner “relies on the identical portions of the reference considered by the Examiner and does not present any persuasive evidence to supplement the record that was in front of the Office during the original prosecution.”  The Board exercised its discretion because petitioner did not “shed[] a substantially different light on” the asserted reference.

Sony Corp. v. Imation Corp., IPR2015-01557, Paper 7 (PTAB Jan. 4, 2016) The Board declined to exercise its discretion under §325(d) to deny institution for grounds that included reference relied upon by a separate petitioner in another IPR proceeding instituted against the same patent.  The Board noted that the grounds of challenge were different than the challenges in the other petition, that the petitioner in the current proceeding was not a party to the other IPR proceeding, and that petitioner relied on testimony from a different declarant than in the other IPR proceeding.   The Board, however, granted institution for only two of the four asserted grounds “for reasons of administrative necessary and to ensure timely completion of the instituted proceeding.”  The Board has discretion to institute review for some asserted grounds and not others.  37 C.F.R. § 42.108(a); 35 U.S.C. § 314(a).  This discretion is consistent with the requirements that the IPR regulations take into account the efficient administration of Office resources “to secure the just, speedy, and inexpensive resolution of every proceeding.” 37 C.F.R. § 42.1(b).

Hydrite Chemical Co. v. Solenis Techs., L.P., IPR2015-01592, Paper 7 (PTAB Jan. 27, 2016).  The Board declined to exercise its discretion under §325(d) to deny institution.  The petition relied upon nine references.  Patent owner argued that the Board should exercise its discretion under §325(d) because four of the nine references were considered during prosecution, including two primary references used in separate obviousness grounds.  The Board declined to exercise its discretion under § 325 because petitioner provided additional art, arguments, declaration evidence and other information not previously considered by the Patent Office.

Volkswagen Grp. of Am., Inc., v. Joao Control & Monitoring Sys., LLC, IPR2015-01612, Paper 7 (PTAB Jan. 29, 2016) The Board exercised its discretion under § 325(d) to deny institution for seven of thirteen challenged claims.  The Board denied institution for the seven claims because petitioner had relied on the same prior art and substantially similar arguments that were presented in a prior ex parte reexamination of the patent.  The Board noted that, relative to the reexamination, one challenge in the petition relied on the same combination of prior art presented in the reexamination, except that the order of the primary and secondary references was switched.  The Board determined that recasting of the obviousness grounds did not alter the prior consideration of these references in combination and denied review for the seven claims whose patentability was confirmed in the reexamination.

Shenzhen Liown Electronics Co., Ltd. v. Disney Enterprises, Inc., IPR2015-01658 (PTAB Feb. 9, 2016).  The Board declined to exercise its discretion under § 325(d) to deny institution for a second petition challenging the same claims of the same patent, relying on the same prior art, relying on the same expert declaration and making the same arguments as a first petition.   Although presenting the same prior art, arguments, and challenged claims on the merits, petitioner also names two additional real parties-in-interest.  Petitioner indicates that it sought to avoid a potential issue by filing a new petition and paying the associated fees.  The Board therefore determined that the circumstances were distinguishable from Unilver and Medtronic and declined to exercise its discretion to deny the petition.

Tietex Int’l, Ltd. v. Precision Fabrics Group, Inc., IPR2015-01671, Paper 7 (PTAB Feb. 11, 2016).  The Board exercised its discretion under § 325(d) to deny institution for a first petition against a patent that petitioner had not previously challenged in an IPR proceeding.  The Board faulted petitioner for not offering new evidence and/or arguments than was presented in an earlier IPR proceeding.  The Board previously issued a final written decision in a related patent challenged by the same petitioner, in which the Board determined that the claims of the related patent are not unpatentable over a combination of three references.  In this proceeding, petitioner relied on the same combination of three references that the Board addressed in the final written decision for the related patent. The Board noted that the two patents have identical descriptive content.  While acknowledging differences between the claims of the two patents, the Board indicated that the claims of the two patents are so similar in scope and content that petitioner was relying on the same arguments that were found to be unpersuasive in the earlier proceeding.  The Board denied institution for judicial efficiency and to minimize prejudice to patent owner.

Arista Networks, Inc. v. Cisco Systems, Inc., IPR2015-01710, Paper 7 (PTAB Feb. 16, 2016) The Board exercised its discretion under § 325(d) to deny institution for a second petition that challenged the same claims that were challenged in a first petition by the same petitioner.  The Board denied institution of the first petition because the primary reference in the first petition did not disclose several claim features.  In the second petition, petitioner relied upon a new primary reference.  However, the Board indicated that, other than the substitution of the primary references, the art cited in the obviousness grounds in the second petition overlaps completely with the arguments asserted in the first petition.  Further, the Board indicated that while petitioner provided more specificity in the second petition for an obviousness ground that was identified as lacking specificity in the first petition, the argument was substantially similar which causes patent owner to be forced with addressing a similar ground with similar arguments in two separate petitions.  Allowing similar, serial challenges to the same patent, by the same petitioner, risks harassment of patent owners and frustration of Congress’s intention in enacting the AIA.  The Board emphasized that petitioner did not contend that the newly-cited reference was not known or available to it at the time of filing the first petition.

Funai Elec. Co., Ltd. v. Gold Charm Ltd., IPR2015-01491, Paper 18 (PTAB Feb. 18, 2016) The Board denied institution of several claims because the same prior art asserted in the petition was considered by the Examiner during prosecution against those claims.  On rehearing, petitioner argued that the Board reached a different conclusion than the Examiner with respect to a particular claim construction.  The Board indicated that, even if different claim constructions were considered by the Board and the Examiner, the Board’s discretion under § 325(d) is not limited to cases in which the Board concurs or adopts a claim construction previously applied by the Office.

SATA GmbH & Co. KG v. Anest Iwata Corp., IPR2015-01790, Paper 14 (PTAB Feb. 19, 2016).  The Board exercised its discretion under § 325(d) to deny institution for a second petition challenging claims for which the Board previously denied institution.  The Board denied institution for the challenged claims on the basis that petitioner did not meet its burden in the prior petition to show that an asserted reference inherently discloses a claim limitation.  In the second petition, petitioner provided testimony from two declarants to support the assertion that the reference inherently discloses the claim limitation. The Board indicated that petitioner did not persuasively demonstrate how its arguments differ in any material respect from the arguments in the prior petition.  In addition, the Board indicated that petitioner did not provide specific citations to particular portions of the declarations to support its argument about the inherency of the claimed feature.  Merely bolstering previously-made arguments that the Board previously found lacking, generally accompanied with non-specific evidence, does not change the argument sufficiently for the Board to consider the argument not substantially the same for purposes of § 325(d).  The Board also faulted petitioner for not indicating that the additional testimony and references were unavailable when the prior petition was filed.  Although petitioner is not barred from providing additional information in a later petition, the Board is more likely to exercise its discretion under § 325(d) where a petitioner uses repeated petitions in an attempt to build a sufficient challenge incrementally.

Neil Ziegman, N.P.Z., Inc. v. Stephens, IPR2015-01860, Paper 11 (PTAB Feb. 24, 2016) The Board exercised its discretion under § 325(d) to deny institution on the basis that the petition presented substantially the same or similar art or arguments as those previously presented during prosecution of the patent. During prosecution, the examiner rejected the challenged claims as obvious over two references, relying on the secondary reference to teach the feature of a shaped-end trigger.  Each ground of unpatentability asserted in the petition was based on Ziegmann as the primary reference, but petitioner relied on secondary references to teach the shaped-end trigger feature.  Ziegmann was considered by the examiner during prosecution but was not applied in a rejection of the challenged claims.  Nevertheless, the Board determined that Ziegmann was substantively presented to and considered by the Office in conjunction with the challenged claims.  The Board noted that the examiner applied Ziegmann to reject other claims of the patent, indicating that the substance of Ziegmann was considered by the examiner with respect to the challenged claims.  The Board also determined that the argument regarding whether it would have been obvious to modify a primary reference to include the shaped-end trigger feature of the challenged claims was previously presented to and considered by the Office. The Board indicated that petitioner was essentially requesting the Board to second-guess the Office’s previous decision on substantially the same issue, which is not an efficient use of the Board’s resources.

Innopharma Licensing, Inc. v. Senju Pharmaceutical Co., Ltd., IPR2016-00089, Paper 13 (PTAB Feb. 25, 2016). One of the grounds of challenge asserted in the petition was substantially identical to the grounds of challenge asserted by another petitioner.  To facilitate joinder, petitioner offered to proceed with only those grounds which were instituted in the earlier petition filed by another petitioner.  The Board declined to exercise its discretion under § 325(d) to deny institution of the instant petition, since petitioner modified its grounds to only those grounds which were previously instituted in response to the other petition.

Coalition for Affordable Drugs (ADROCA) LLC v. Acorda Therapeutics, Inc., IPR2015-01853, Paper 13 (PTAB Mar. 11, 2016) The Board declined to exercise its discretion under §325(d) to deny institution of a petition asserting prior art references that were previously presented in an earlier petition that was denied instituion. The Board denied institution of the prior petition because petitioner did not make a threshold showing that several asserted references qualify as a printed publication.  The Board declined to exercise its discretion under § 325(d) because the grounds of challenge in the instant petition relied on a new document, and the Board did not previously address whether that new document qualifies as a printed publication or whether petitioner established a reasonable likelihood of prevailing based on that new document.

Front Row Techs., LLC v. MLB Advanced Media, L.P., IPR2015-01932, Paper 7 (PTAB Mar. 25, 2016) The Board exercised its discretion under §325(d) to deny institution on the basis that petitioner asserted the same combination of two references that was considered during an ex parte reexamination, which was requested by petitioner.  During the reexamination, patent owner amended the claims twice in order to overcome the combination of references.  Petitioner argued that the Examiner overlooked relevant teachings of the references in determining that the challenged claims are patentable over the references.  The Board disagreed, indicating that the Examiner substantively considered the same prior art and arguments substantially similar to those set forth by petitioner.   The Board indicated that it was not persuaded by petitioner’s new arguments, asserting that “the analysis provided by Petitioner as to the relative similarity between the claimed subject matter and the asserted paragraphs is conclusory and unsupported by sufficient facts or evidence.” The Board indicated that “given the relative clarity of the already-considered difference in scope between” the challenged claims and asserted references, the Board “need not re-analyze those references and reconsider unpatentability issues presented previously to and considered by the Office.”

Palo Alto Networks, Inc. v. Finjan, Inc., IPR2015-01974, Paper 7 (PTAB Mar. 29, 2016). The Board exercised its discretion under §325(d) to deny institution for several grounds of challenge on the basis that certain claims of the patent are undergoing ex parte reexamination, and a final rejection in the reexamination was appealed to the Board. The Board agreed with patent owner’s argument that the reference asserted in the IPR proceeding is “the same in all material respects” as the reference asserted in the reexamination. Patent owner provided a side-by-side comparision of the disclosures of the references asserted in the petition and the reexamination. While noting that different combinations of art were presented in the petition as compared to the reexamination rejections on appeal before the Board, the Board indicated that those differences are not material. The Board determined that the same or substantially prior art or arguments have been presented previously in another proceeding. On rehearing (Paper 9), the Board indicated that § 325(d) “does not require a complete overlap” of disclosures for the Board “to deem their disclosures (or arguments presented regarding those disclosures) substantially the same.”

Sony Corp. v. Raytheon Co., IPR2016-00209, Paper 12 (PTAB Mar. 29, 2016). The Board declined to exercise its discretion under § 325(d) to deny institution for a second petition that was filed six months after a first petition for which review was granted. The Board noted that petitioner relied on different principal references in the two petitions, where the principal reference in the first petition was prior art under § 102(e) while the principal reference in the second petition was prior art under §102(b). The Board also noted that the second petition was filed prior to the Board’s institution decision for the first petition, so petitioner did not have the benefit of the institution decision in preparing the second petition.

Amerigen Pharmaceuticals Ltd. v. Shire LLC, IPR2015-02009, Paper 8 (PTAB Apr. 18, 2016). The Board rejected patent owner’s arguments that the Board should exercise its discretion under 35 U.S.C. § 325(d) to deny institution. The Board noted that three relied-upon references appear on the face of the patent as having been acknowledged by the Examiner. Patent owner argued that one of the three references was a principal reference that was overcome during prosecution. The permissive language of § 325(d) signals that the Board is not required to reject a petition simply because it relies on art that was cited to the Office previously.  The Board declined to deny institution in this case, at least in part because the Board’s preliminary claim constructions differ in certain respects from those advanced during prosecution.

Telit Wireless Sols. Inc. v. M2M Sols. LLC, IPR2016-00055, Paper 9 (PTAB Apr. 22, 2016). The Board declined to exercise its discretion under § 325(d) to deny institution for challenges that were based on references which were of record during prosecution. Patent owner did not direct the Board to anywhere in the record showing a substantive discussion of the references, or that the Examiner considered a challenge to the claims in the same or substantially the same manner presented in the petition.

Hospitality Core Servs. LLC v. Nomadix, Inc., IPR2016-00052, Paper 8 (PTAB Apr. 27, 2016) The Board exercised its discretion under 35 U.S.C. § 325(d) to deny institution, in part, for grounds of challenge that were based on a reference that was previously presented to the Office in a request for inter partes reexamination. The reference received full consideration in view of the subject matter claimed in the challenged patent in the Central Reexamination Unit’s (CRU) denial of inter partes reexamination. The CRU determined that the reference was deficient for not teaching limitations of the claims, and the Board indicated that it did not find anything in the record that might demonstrate error in the CRU’s determinations.

Koito Mfg. Co., Ltd. v. Adaptive Headlamp Techs., Inc., IPR2016-00079, Paper 11 (PTAB May 5, 2016). The Board declined to exercise its discretion under § 325(d) to deny institution for obviousness challenges that included prior art previously considered by the Office. Patent owner argued that one of the asserted references was considered during prosecution of the patent, and another reference was “cumulative of the arguments raised by the petitioner in the previous inter partes reexamination.” The Board disagreed with patent owner’s argument, indicating that the primary reference for all obviousness combinations was not previously considered, the reference that was previously considered during prosecution is cited “only as a secondary reference,” the claims were amended during the inter partes reexamination and differ substantially from the claims allowed by the examiner, and patent owner did not sufficiently explain why the allegedly cumulative reference was in fact cumulative of arguments that were presented in the reexamination.

South-Tek Sys., LLC v. Engineered Corrosion Sols., LLC, IPR2016-00136 (PTAB May 12, 2016). The Board declined to exercise its discretion under § 325(d) to deny institution for an obviousness challenge that patent owner alleged was duplicative of arguments previously considered by the Office. The Board disagreed, indicating that the primary reference of the challenge was not considered during prosecution. Further, the Board disagreed with patent owner’s argument that petitioner did not present any evidence regarding why the primary reference is “more relevant than the art previously considered by the Office.” There is no requirement that petitioner needs to show that an asserted reference is more relevant than the art previously considered by the Office. The fact that other references relied on by petitioner were cited during prosecution does not establish that the asserted ground is duplicative of obviousness arguments previously considered by the Office.

Automotive Data Sols., Inc. v. AAMP of Fla., Inc., IPR2016-00061, Paper 23 (PTAB May 13, 2016) The Board declined to exercise its discretion under § 325(d) to deny institution for an issue of whether the challenged claims are entitled to the filing date of an earlier application.  Patent owner argued that the issue of the earliest effective filing date had already been decided in a prior reexamination involving a related patent (citing Prism Pharma Co., IPR2014-00315, Paper 14).  The Board disagreed, indicating that the filing date benefit question decided in the reexamination of the related patent was not dispositive of whether the subject matter of the challenged claims is entitled to an earlier fiing date.  The Board determined that the petition established sufficiently that the subject matter of the subject challenged claims was not entitled to the earlier filing date and therefore subject to the asserted prior art.

Ariosa Diagnostics v. Verinata Health, Inc., IPR2013-00276, Paper 63 (PTAB May 24, 2016) The Board exercised its discretion under §§ 315(d) and 325(d) to terminate an ex parte reexamination filed by petitioner after the Board issued a final written decision determining that petitioner failed to demonstrate that the challenged claims are unpatentable over a first combination of references.  The IPR proceeding was on remand from the Federal Circuit.  In the reexamination, petitioner asserted three separate combinations of references that were not instituted or substantively considered in the IPR proceeding.   The Board indicated that its authority under § 315(d) to terminate a reexamination does not depend on whether “the same or substantially the same prior art or arguments previously were presented to the Office.”  Rather, under § 315(d), the Board must exercise its authority “during the pendency of an inter partes review.”   The Board terminated the reexamination based on its belief that the references asserted in the reexamination are “very similar” to art presented by petitioner in the IPR proceeding, and that petitioner did not explain why the newly asserted references could not have been relied upon in the earlier IPR proceeding.  The Board indicated that petitioner had the benefit of the final written decision and the Federal Circuit’s guidance on appeal.  To allow petitioner to proceed with the reexamination would be unfair to patent owner.

T-Mobile US, Inc. v. TracBeam LLC, IPR2016-00745, Paper 11 (PTAB May 25, 2016) The Board exercised its discretion under § 325(d) to deny institution for the only challenged claim because petitioner previously challenged that claim on the basis of the same combination of references in a previous IPR petition.  In response to the previous petition, the Board denied institution with respect to the challenged claim on the basis of the same combination of references.   The Board indicated that petitioner used the prior institution decision as a roadmap to correct the errors in the first petition.  The Board disagreed with petitioner’s argument that new inventor testimony should be considered when considering the combination of references asserted in the second petition.  The Board indicated that petitioner did not explain how the inventor’s testimony bears on whether the combination of references teaches a feature that was found to be missing from the prior art in the earlier institution decision.

Arista Networks, Inc. v. Cisco Sys., Inc., IPR2016-00304, Paper 8 (PTAB June 6, 2016) The Board exercised its discretion under § 325(d) to deny institution for a second petition that was filed after an earlier, first petition was denied institution.  The Board indicated that the second petition did not explain how petitioner’s contentions are different from those presented in the first petition, and petitioner did not provide “any cogent rationale for why the Board should undertake a second Petition asserting substantially similar prior art Petitioner previously presented.”  The Board also noted that the second petition was filed approximately two months after the Board denied institution of the first petition.  The Board indicated that petitioner’s reliance on a new reference “is, therefore, an attempt to bolster the unsuccessful challenge previously presented regarding [another reference’s] alleged disclosure of the determining limitation.” The Board determined that the second petition relied on the new reference to bolster the Board’s noted deficiencies in the other reference as guided by the Board’s decision in the earlier petition.

Elekta, Inc. v. Varian Medical Sys., Inc., IPR2016-00317, Paper 12 (PTAB June 7, 2016) The Board declined to exercise its discretion under § 325(d) to deny institution on the basis that petitioner had presented similar prior art and arguments against the same patent in another petition.  The Board indicated that although both petitions “address the same patent and some of the same prior art, the arguments presented are not the same because each challenges a different set of claims. We see no reason to bar Petitioner from challenging different claims at different times in separate petitions.”

Great West Casualty Co. v. Intellectual Ventures II LLC, IPR2016-00453, Paper 12 (PTAB June 9, 2016) The Board exercised its discretion under §§ 314(a) and 325(d) to deny institution for all grounds of challenge because it was the fourth petition filed by petitioner against the same claims.  In one of the prior petitions, petitioner relied on the same primary reference that was asserted in the instant petition.  The Board noted that petitioner filed the instant petition after patent owner filed its preliminary response, and relied on a nesw secondary reference in case the Board adopted patent owner’s claim construction.  The Board indicated that it was “unpersuaded generally that the possibility of an adverse determination alone is a sufficient basis to justify institution of a subsequent petition….Petitioner cannot expect automatic institution on multiple petitions submitted for consideration, especially if they are against the same claims, of the same patent, using substantially the same prior art, and filed so long apart that Petitioner received the benefit of having studied Patent Owner’s Preliminary Response in an earlier Petition.”  The Board also noted that petitioner did not indicate that it was unaware of the newly asserted reference when it filed the instant petition.

Activision Blizzard, Inc. v. Acceleration Bay, LLC, IPR2016-00932, Paper 13 (PTAB June 23, 2016) The Board exercised its discretion under § 325(d) to deny institution for a second petition filed to challenge a claim for which institution was denied in response to an earlier petition.  In the second petition, petitioner presented two different grounds of challenge: a first obviousness challenge based on the primary reference alone, and a second obviousness challenge based on the primary reference and the secondary reference.  The petitioner relied on the same prior art asserted in the earlier petition, but the grounds of challenge were different in the second petition.  The Board determined that petitioner relied on substantially the same arguments that were asserted in the earlier petition.  For the first obviousness challenge in the second petition, the Board noted that petitioner previously relied on the secondary reference in combination with the first reference, but petitioner did not persuasively explain why it could not have challenged the claim based on the primary reference alone in the earlier petition.  For the second obviousness challenge, the Board noted that petitioner switched the order of the primary and secondary references in comparison to the earlier petition.  The Board indicated that this switch was of “no significance,” and that petitioner relied in large part upon the same disclosures in the references to contend the claim was obvious.  The Board also indicated that a challenge to the claim in a related IPR was further reason to deny the challenge.

Lower Drug Prices for Consumers, LLC v. Forest Labs. Holdings Ltd., IPR2016-00379, Paper 14 (PTAB July 1, 2016) The Board exercised its discretion under § 325(d) to deny institution because petitioner’s challenge was based on the same primary reference addressed during prosecution, including by the Board in an appeal, and petitioner presented substantially the same arguments regarding how the primary reference would have been modified. Although the prior panel of the Board expressly set forth the deficiencies in the examiner’s position with respect to the evidence of unexpected results, the petition is silent as to those deficiencies. Because petitioner did not address these issues, or explain why the evidence of unexpected results is insignificant, the Board indicated that it was not inclined to reconsider the Board’s prior decision.

Samsung Elecs. Co., Ltd. v. Elm 3DS Innovations, LLC, IPR2016-00388, Paper 11 (PTAB July 1, 2016) The Board declined to exercise its discretion under § 325(d) to deny institution on the basis that petitioner relied on similar arguments of unpatentability that were considered by the examiner during prosecution.  Patent owner argued that petitioner replaced the primary reference in an obviousness rejection during prosecution of a related patent application with a different primary reference having the same teachings.  The Board indicated that, to the extent patent owner was arguing that the Board should give deference to earlier determinations of allowability because of the examiner’s “explicit consideration” of a similar combination during examination, there is no presumption of validity as to the challenged claims in an IPR.  Furthermore, § 325(d) has permissive language indicating that the Board may take into account whether the same or substantially the same prior art or arguments were previously presented to the Office.  The Board also noted that petitioner’s expert declaration was not before the Office during prosecution.

Boehringer Ingelheim Int’l GmbH v. AbbVie Biotechnology Ltd., IPR2016-00409, Paper 9 (PTAB July 7, 2016).  The Board declined to exercise its discretion under § 325(d) to deny institution.  Patent owner argued that petitioner asserted substantially the same prior art and arguments that were considered by the examiner during prosecution.  The Board noted that petitioner relied on two expert declarations, which patent owner did not allege are duplicative of evidence previously presented to the Office.  Further, the examiner relied upon testimonial evidence that was not subject to cross-examination in determining patentability of the claims.

Munchkin, Inc. v. Skip Hop, Inc., IPR2016-00536, Paper 12 (PTAB July 21, 2016) The Board declined to exercise its discretion under § 325(d) to deny institution because an asserted reference had been considered during prosecution.  Although the asserted reference was of record during prosecution of the patent, patent owner did not identify anywhere in the record showing that the examiner considered a challenge to the claims involving the same or substantially the same combination of references presented in the petition.

Microsoft Corp. v. Bradium Techs. LLC, IPR2016-00448, Paper 9 (PTAB July 25, 2016) The Board declined to exercise its discretion under § 325(d) to deny institution for a second petition that asserted a new combination of references after an earlier petition was denied institution. The Board disagreed with patent owner’s arguments that the second petition was an improper “do-over” that used the initial institution decision as a “roadmap,” and that patent owner was prejudiced by the timing of the second petition.   The Board indicated that petitioner did not present an unreasonable number of challenges, and that the filing of the second petition near the end of the statutory period did not demonstrate prejudice.  “To the contrary, the timing of the petitions illustrates that Petitioner acted expeditiously after being sued by Patent Owner and that the one year statutory time bar for filing a petition imposed by 35 U.S.C. § 315(b) provides a self-limiting mechanism that protects Patent Owner from prejudice resulting from serial attacks from the same Petitioner….It is unrealistic to assume a second petition will not attempt to address deficiencies of an earlier petition, and there is no established per se rule of the Board requiring that we deny institution based on a ‘roadmap’ test.”

Praxair Distribution, Inc. v. Ino Therapeutics LLC, IPR2016-00781, Paper 10 (PTAB Aug. 25, 2016). The Board denied institution of a second petition filed against the challenged patent on the basis that petitioner was estopped from pursuing the new grounds of challenge, and the Board exercised its discretion under § 325(d) to deny institution for the new challenges. Although petitioner newly asserted two new references, the Board determined that petitioner’s “underlying argument” was “essentially the same as that raised” in the earlier petition. The Board reasoned that petitioner’s new argument was that the newly-asserted reference expressly state that which one of ordinary skill in the art would have understood from the prior art asserted in the earlier petition.

Frontier Therapeutics, LLC v. Medac Gesellschaft Für Klinische Spezialpräparate mbH, IPR2016-00649, Paper 10 (PTAB Sept. 1, 2016). The Board declined to exercise its discretion under § 325(d) to deny institution for grounds of challenge that were previously considered and instituted by the Board in response to an earlier petition filed by a different petitioner. Patent Owner contends that the “Board should not countenance this behavior by a reverse patent troll [i.e., petitioner], who is looking for no more than a quick payoff” in the form of a settlement. In the prior IPR involving a different petitioner, the Board instituted trial on the same grounds at issue in this proceeding, but terminated the proceeding before issuing a final written decision. In addition, by statute, the AIA provides that “a person who is not the owner of a patent may file with the Office a petition to institute an inter partes review of the patent.'”

Estoppel Before the Office

A petitioner in an IPR, CBM or PGR that results in a final written decision may not request or maintain a proceeding before the Office with respect to a claim addressed in the final written decision that the petitioner raised or reasonably could have raised during the review.  The estoppel applies not only to petitioner, but also to the real party-in-interest or the privy of the petitioner.  35 U.S.C. §§ 315(a)(1) and 325(a)(1).

Square, Inc. v. Unwired Planet, LLC, CBM2015-00148, Paper 14 (PTAB Dec. 28, 2015).  The Board denied institution under § 325(e)(1) because petitioner could have raised the newly relied-upon prior art in an earlier-filed petition.  The Board stated that the issue was not whether petitioner knew about the newly relied-upon reference, but whether petitioner reasonably could have discovered the newly relied-upon reference and raised the newly asserted grounds at the time of filing the earlier petition.

International Business Machines Corp. v. Intellectual Ventures II LLC, IPR2014-01465, Paper 32 (PTAB Nov. 6, 2015) The Board determined the IPR proceeding on the basis that petitioner was estopped under 35 U.S.C. § 315(e)(1), because petitioner reasonably could have raised the ground of unpatentability in an earlier IPR proceeding.  The Board agreed with patent owner that the relied-upon reference is a publication that a skilled searcher conducting a diligent search reasonably could have discovered.   The Board was not persuaded by petitioner’s argument that it could not have anticipated patent owner’s argument and therefore raised the reference in the earlier IPR proceeding.  The Board’s focus is on what a skilled searcher conducting a diligent search reasonably could have been expected to discover, not whether petitioner could foresee that patent owner would make certain arguments in the earlier proceeding.

Apotex Inc. v. Wyeth LLC, IPR2015-00873, Paper 8 (PTAB Sept. 16, 2015) A ground of unpatentability raised in an earlier petition cannot be the basis for estoppel under 35 U.S.C. § 315(e)(1) if that ground was not instituted.  The estoppel provisions of 35 U.S.C. § 315(e)(1) apply only to grounds that petitioner “raised or reasonably could have raised during [the] inter partes review.”  If a ground is not instituted (e.g., denied as redundant), then that ground is not raised during the IPR.  That ground cannot also be one that “reasonably could have been raised during” the IPR, because once denied, the Board’s decision on institution prevents petitioner from raising that ground during the trial.

Dell Inc. v. Elecs. and Telecomms. Research Inst., IPR2015-00549, Paper 10 (PTAB Mar. 26, 2015) (representative) Institution was denied on the basis that petitioner could have raised the ground of unpatentability in a prior IPR proceeding in which petitioner received a final written decision.  Although the grounds presented in the different proceedings were not the same, the Board stated that “the differences in how the references have been asserted in these proceedings have no weight on our determination of whether the grounds raised in the instant Petition could have been raised in the [earlier] IPR.”  Both references relied upon by petitioner in the current proceeding were relied upon in the earlier IPR.

Westlake Services, LLC v. Credit Acceptance Corp., CBM2014-00176, Paper 28 (PTAB May 14, 2015) (precedential). Estoppel under 35 U.S.C. § 325(e)(1) is applied on a claim-by-claim basis only if a final written decision has been issued for that claim. Petitioner filed a first petition challenging all the claims of the patent, but the Board denied institution for several claims. Petitioner then filed a second petition for the claims that were denied review. The Board instituted a second trial for the claims that were denied review in the first trial. After institution of the second trial, the Board issued a final written decision in the first trial. Patent owner argued that petitioner was estopped from maintaining the challenge to the claims in the second trial because petitioner had challenged those claims in the first petition. The Board determined that the final decision in the first trial did not trigger estoppel for the claims challenged in the second trial, because the final decision did not address the non-instituted claims.

Apple Inc. v. Smartflash LLC, CBM2015-00016, Paper 50 (PTAB Nov. 4, 2015).  In a previous CBM proceeding, the Board issued a final written decision determining that claim 1 is unpatentable under 35 U.S.C. § 103.  In the present CBM proceeding, petitioner challenged claim 1 under 35 U.S.C. § 101.  In view of the Board’s prior determination that claim 1 is unpatentable under § 103, the Board determined that petitioner is estopped under §325(e)(1) from maintaining its challenge of claim 1 in the current CBM proceeding.  The Board disagreed with petitioner’s argument that it could not reasonably have raised the § 101 challenge in its earlier petition because the Supreme Court had not issued its Alice decision at the time the previous petition was filed.  § 325(e)(1) estops petitioner from filing or maintaining a proceeding before the Office with respect to the claims at issue on any ground that petitioner raised or reasonably could have raised.  This statutory provision does not make exceptions for intervening case law that merely clarifies jurisprudence. Moreover, although Alice was not decided, the Supreme Court had already decided Bilski and Mayo on which Alice relied, and a number of Federal Circuit cases had already issued finding computer-based method claims invalid under § 101.

Ford Motor Co. v. Paice LLC & The Abell Foundation, Inc., IPR2014-00884, Paper 38 (PTAB Dec. 10, 2015). Petitioner was estopped from challenging two claims in the current IPR proceeding because of prior art it was aware of, and could have raised, in prior IPR proceedings challenging the same two claims. What a petitioner “reasonably could have raised” includes prior art that a skilled advocate would have been expected to discover and proffer in the course of conducting due diligence on the patent at issue. Some of the prior art relied upon by petitioner was cited during prosecution of the challenged patent. As such, petitioner was on notice of those references as potential prior art before it filed its petitions. In addition, petitioner asserted the other prior art reference in another proceeding, so it was aware of that prior art.

Adama Makhteshim Ltd. v. Finchimica S.P.A., IPR2016-00577, Paper 7 (PTAB May 24, 2016). The Board denied institution of two challenged grounds, determining that petitioner was estopped under 37 C.F.R. § 41.127(a) as to those two grounds. A judgment in an interference disposes of all issues that were, or by motion could have properly been, raised and decided. A losing party who could have properly moved for relief on an issue, but did not so move, may not take action in the Office after the judgment that is inconsistent with that party’s failure to move. Therefore, if a losing party in an interference filed a motion that was denied during the interference, that party is estopped from seeking the relief it sought in the denied motion in another proceeding before the office. Because petitioner did not raise the issue of patentability of the challenged claims over an asserted reference during the interference even though petitioner could have raised the issue, petitioner is estopped under § 41.127(a) from raising that patentability issue. The Board denied a second challenge because it was fully considered by the Board during the interference proceeding after the petition was filed, and therefore, petitioner is estopped from presenting that challenge under § 41.127(a).

Kofax, Inc. v. Uniloc USA, Inc., IPR2015-01207, Paper 22 (PTAB June 2, 2016). The Board granted patent owner’s motion to terminate the IPR proceeding. The Board determined that petitioner was estopped under 35 U.S.C. § 315(e)(1) from maintaining the proceeding because petitioner reasonably could have raised the grounds of challenge in an earlier IPR proceeding for which a final written decision was issued as to all claims of the challenged patent. The Board determined that petitioner was aware of the grounds at the time of filing the earlier proceeding, and petitioner had an opportunity to raise the grounds in the earlier proceeding within one month of institution of the earlier proceeding by requesting joinder with the earlier proceeding.   The Board noted that petitioner unsuccessfully sought CBM review for the same grounds on the same day the earlier IPR proceeding was filed, and therefore, petitioner was aware of the asserted grounds. The Board determined that it was not unreasonable for petitioner to have filed both CBM and IPR petitions on the same day, and sought joinder with the other IPR proceeding in case the petition for CBM review was unsuccessful.

Praxair Distribution, Inc. v. Ino Therapeutics LLC, IPR2016-00781, Paper 10 (PTAB Aug. 25, 2016). The Board denied institution of a second petition filed against the challenged patent because petitioner had received a final written decision in response to a first petition challenging all the claims of the patent. Petitioner newly asserted two references in the second petition, and argued that it was not aware of the newly-asserted references despite conducting diligent searches of the prior art. The Board determined that petitioner’s evidence did not demonstrate that petitioner engaged a skilled searcher who conducted a diligent search, and therefore held that petitioner reasonably could have raised the grounds in the earlier petition. The Board also determined that petitioner’s foreign subsidiary, who was a named petitioner in the second proceeding, was estopped because the foreign subsidiary is a real party-in-interest and privy of the petitioner in the first proceeding.

Expanded Panel

Post-grant proceedings including IPRs, CBMs and PGRs are “heard by at least 3 members of the Patent Trial and Appeal Board.”  35 U.S.C. § 6(c).  The following cases address attempts by the parties to request an expanded panel.

AOL Inc. v. Coho Licensing LLC, IPR2014-00771, Paper 12 (PTAB Mar. 24, 2015) (informative). Parties are not permitted to request, and panels do not authorize, panel expansion.  The members of the Board deciding an institution matter do not select themselves, or other Board members, to decide the matter, upon request of a party or otherwise. The Board’s Standard Operating Procedures state that the Chief Judge, on behalf of the Director, may act to expand a panel on a “suggestion” from a judge or panel.  Whether to expand the panel in an IPR matter on a “suggestion” involves consideration of whether the issue is one of conflict with an authoritative decision of our reviewing courts or a precedential decision of the Board, or whether the issue raises a conflict regarding a contrary legal interpretation of a statute or regulation.  A dissent in the denial of institution based on the sufficiency of the evidence presented in the petition, by itself, is not a reason to expand the panel.

Unilever, Inc. v. Procter & Gamble Co., IPR2014-00506, Paper 25 (PTAB Dec. 10, 2014) (informative).  The Board denied petitioner’s request for an expanded panel that includes the Chief Judge.  The members of the Board deciding an institution matter are not authorized to select themselves or other Board members to decide the matter, upon request of a party or otherwise. According to the Standard Operating Procedure, the Chief Judge, on behalf of the Director, may act to expand a panel on a suggestion from a judge or panel.  The Standard Operating Procedure creates “internal norms for the administration of the Board” but “does not create any legally enforceable rights.”

Hopkins Manufacturing Corp. v. Cequent Performance Prods., Inc., IPR2015-00616, Paper 11 (PTAB Nov. 4, 2015).  Parties are not permitted to request panel expansion. The Board’s Standard Operating Procedures state that the Chief Judge, on behalf of the Director, may act to expand a panel on a “suggestion” from a judge or panel.

*Note: The Board revised its standard operating procedure to provide that, while a party may not request an expanded panel, a party may suggest the need for an expanded panel.  Patent Trial and Appeal Board Standard Operating Procedure 1 §III.C. (Rev. 14) (May 8, 2015).

Expert Testimony

Petitioners and patent owners may submit expert testimony to support the arguments and evidence presented with their pleadings.  37 C.F.R. § 42.65(a) provides that expert testimony which does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.

SAS Inst., Inc. v. ComplementSoft, LLC, IPR2013-00226, Paper 38 (PTAB Aug. 6, 2014).  In the case of conflicting evidence, expert declaration testimony is not persuasive if it is not supported by objective evidence.

Edmund Optics, Inc. v. Semrock, Inc., IPR2014-00583, Paper 50 (PTAB Sept. 9, 2015).  The Board was not persuaded by the testimony of petitioner and patent owner’s respective experts on claim construction.  The Board determined that the expert declaration testimony submitted by both parties does little more than repeat, without citation to additional evidence, the conclusory arguments of their respective counsel and will therefore be accorded little or no weight.

Caterpillar, Inc. v. Esco Corp., IPR2015-01032, Paper 12 (PTAB Oct. 15, 2015).  Whether expert testimony discloses the underlying facts or data upon which the expert’s opinion is based, under 37 C.F.R. § 42.65(a), relates to the weight to be afforded that evidence, and not the admissibility of that evidence.  Patent owner objected to the declaration testimony of petitioner’s expert, arguing that the declaration fails to disclose the facts or data upon which the testimony is based and bears such a resemblance to the petition that the petition does not represent the declarant’s own work.  The Board declined to exclude the expert’s testimony in the institution decision.  The Board noted that, after institution, patent owner has ten days to object to the evidence.  Upon receiving an objection, petitioner may serve supplemental evidence attempting to address the objection.  37 C.F.R. § 42.64(b)(2).

Johns Manville Corp. v. Knauf Insulation Inc., IPR2015-01633, Paper 10 (PTAB Jan. 4, 2016).  The Board denied institution of an anticipation ground on the basis that petitioner did not provide sufficient evidence to support the challenge.  Petitioner argued that a reference inherently teaches the features of numerous claims based on experiments supervised by petitioner’s expert.  However, the Board indicated petitioner did not provide any prior art or other literature to support the expert’s opinion on inherency.  Therefore, the expert testimony is entitled to little or no weight under 37 C.F.R. § 42.65(a) because the expert’s testimony does not provide the underlying facts or data upon which the expert’s opinion is based.  Petitioner argued that the Board should not doubt its expert’s opinion at the preliminary stage of institution.  The Board disagreed, indicating that a lack of credible support is no justification to put patent owner to the expense of defending an IPR trial.

C.R. Bard, Inc. v. Medical Components, Inc., IPR2015-01654, Paper 9 (PTAB Feb. 4, 2016). Expert testimony which merely repeats attorney argument without citation to the asserted prior art references or any other evidence is entitled to little, if any, weight.

Chums, Inc. v. Cablz, Inc., IPR2014-01240, Paper 43 (PTAB Feb. 8, 2016). The Board was not persuaded that the declaration testimony of petitioner’s expert was insufficient and vague based on patent owner’s assertions alone.  The Board noted that patent owner elected not to depose petitioner’s expert, so the Board did not have any further testimony to elucidate any purported shortcomings in the expert’s declaration.  The Board, sitting as a non-jury tribunal with administrative expertise, is well-positioned to determine and assign appropriate weight to the evidence presented.

Coalition for Affordable Drugs VII LLC v. Pozen, IPR2015-01680, Paper 18 (PTAB Feb. 11, 2016).  The Board denied institution of asserted obviousness grounds on the basis that petitioner did not demonstrate persuasively why it would have been obvious to combine the compositions of several reasons.  The Board was not persuaded by petitioner’s assertion of predictable results.  The only evidence cited in support of this contention was the declaration testimony of petitioner’s expert.  However, the Board determined that the declaration testimony on this point repeats the statements presented in the petition without citing any evidence in support of the argument.  Conclusory assertions merely repeated and supported are not persuasive.

InfoBionic, Inc. v. Braemer Manufacturing, LLC, IPR2015-01704, Paper 11 (PTAB Feb. 16, 2016). Petitioner’s obviousness arguments were premised on petitioner’s characterizations of the teachings of a relied-upon reference. Other than the addition of the phrase “In my opinion,” the declaration testimony of petitioner’s expert was identical to petitioner’s arguments. The Board discounted the expert’s testimony as conclusory and gave it little or no weight. Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight. 37 C.F.R. § 42.65(a).

Coxcom, LLC v. Joao Control & Monitoring Sys., IPR2015-01765, Paper 8 (PTAB Feb. 19, 2016). In denying institution, the Board was not persuaded by the declaration testimony of petitioner’s expert when addressing patent owner’s arguments. For each section of the reference that patent owner argued against, the Board found that the expert’s testimony relied on conclusory statements. The Board therefore gave the expert’s testimony little to no weight.

Zimmer Biomet Holdings, Inc. v. Four Mile Bay, LLC, IPR2016-00011, Paper 8 (PTAB Apr. 1, 2016). The Board denied institution, in part, because the declaration testimony of petitioner’s expert was determined to be “conclusory.” The expert repeated the claim language and provided citations to particular portions of the reference. However, the Board asserted that the testimony was conclusory because the expert purportedly did not elucidate how the features of the asserted reference corresponded to the positional relationship required by the claims (“the distal end surface of the neck body”).

Micron Tech., Inc. v. Elm 3DS Innovations, LLC, IPR2016-00703, Paper 12 (PTAB Sept. 6, 2016). The Board denied institution, in part, because the obviousness arguments in the petition were not supported with “further explanation or analysis.” While the petition quoted an expert declaration for support, the Board indicated that the expert’s testimony “merely states, without providing further analysis or evidence, that one of ordinary skill in the art” would have recognized petitioner’s obviousness contention. The Board emphasized that because the expert’s testimony did “not disclose the facts underlying his conclusions or provide sufficient analysis or evidence to support his conclusion,” the expert’s testimony is entitled to little or no weight pursuant to 37 C.F.R. § 42.65(a).

Formality Requirements

The following cases address the formality requirements for AIA trials. See, e.g., 35 U.S.C. §§ 311, 312, 321 and 322, and 37 C.F.R. §§ 42.104 and 42.204.

Sony Corp. v. Yissum Research Dev. Co., IPR2013-00219, Paper 16 (PTAB Sept. 23, 2013).  The Board granted institution on the ground of anticipation and an alternative ground of obviousness.   “[A] disclosure that anticipates under 35 U.S.C. § 102 also renders the claim unpatentable under 35 U.S.C. § 103, for anticipation is the epitome of obviousness.”

Athena Automation Ltd. v. Husky Injection Molding Sys. Ltd., IPR2013-00290, Paper 18 (PTAB Oct. 25, 2013).  The doctrine of assignor estoppel does not prevent a party from filing a petition requesting inter partes review, if that party is not the owner of the patent.  Assignor estoppel is an equitable doctrine that prohibits an assignor of a patent or patent application, or one in privity with the assignor, from attacking the validity of that patent when he is sued for infringement by the assignee.  Assignor estoppel is thus a defense to certain claims of patent infringement.  35 U.S.C. § 311(a) provides that “a person who is not the owner of a patent may file with the Office a petition to institute an inter partes review of the patent.”  Consequently, an assignor of a patent may file a petition requesting inter partes review, as long as that party is not the owner of the patent at the time the petition is filed.

Panel Claw, Inc. v. Sunpower Corp., IPR2014-00388, Paper 10 (June 30, 2014).  The Board denied institution for claims having means-plus-function limitations because petitioner did not provide, as required by 37 C.F.R. § 42.104(b)(3), claim constructions for those claims identifying “the specific portions of the specification that describe the structure, material, or acts corresponding to each claimed function.”

SAP America Inc. v. Clouding IP, LLC, IPR2014-00299, Paper 8 (PTAB July 9, 2014).  The Board denied institution of obviousness grounds because petitioner did not articulate any difference between the claimed invention and the asserted references.  An obviousness inquiry is based on factual inquiries including the difference between the claimed invention and the prior art.  Without having identified specifically the differences between the claimed invention and the prior art, petitioner has failed to make a meaningful obviousness analysis under § 103 and thus has failed to make a threshold showing of a reasonable likelihood that the claimed invention is unpatentable over the asserted references.  Without petitioner having identified specifically the differences, the Board is unable to evaluate properly any rationale offered by petitioner for modifying the applied references as proposed by petitioner.

Cisco Systems, Inc. v. C-Citation Techs, LLC, IPR2014-00454, Paper 12 (PTAB Aug. 29, 2014).  The Board declined to consider arguments that were not made in the Petition but were instead incorporated by reference from cited paragraphs and claims charts of the expert’s declaration. The incorporation by reference of numerous arguments in the expert’s declaration into the petition serves to circumvent the page limits imposed on IPR petitions, and is an imposition on the Board’s time, requiring the Board to sift through the expert’s declaration to locate the specific arguments corresponding to the numerous paragraphs cited to support petitioner’s assertions.  The petition used footnotes to cite to numerous pages of the declaration testimony of petitioner’s expert, without sufficient explanation of those pages of the expert’s declaration.  The claim charts in the petition also used footnotes to refer to claim charts in the expert’s declaration for multiple grounds asserted against the claims.  The petition also includes citations to the expert’s declaration to support conclusory statements for which the petition does not otherwise provide an argument or explanation.

Apple, Inc. v. ContentGuard Holdings, Inc., IPR2015-00355, Paper 9 (PTAB June 26, 2015).  The Board denied institution of the asserted obviousness challenges because “the Petition does not identify sufficiently the differences between the claimed invention and the prior art, or how the prior art teachings are to be modified or combined, if at all. “  The Board also indicated that the petition lacked “an articulated or apparent reason supported by ‘some rationale underpinning’ to modify/combine the purportedly known elements in the fashion claimed” by the challenged patent (citing KSR).  The petition improperly left it to the Board “to ascertain what gaps to fill, and then presents vague statements regarding what the prior art suggests, referring to a ‘range of possible implementations,’ ‘obvious variations,’ and ‘obvious design or implementation choices.’” The Board also objected to the expert declaration for making “sweeping” statements without supporting evidence.

Apple Inc. v. ContentGuard Holdings, Inc., IPR2015-00445, Paper 9 (PTAB July 9, 2015).  The Board denied institution on the basis that the petition did not clearly identify how the construed claims are unpatentable by specifying where each element of the claims is found in the relied-upon references.  The Board indicated that “the entire Petition is riddled with vague, nested string citations to broad swaths of the references, the [expert] Declaration, and internal cross-references to whole sections of the Petition.”  The Board faulted petitioner for relying on several layers of abstraction which blurred the lines between the actual teachings of the references, petitioner’s modifications to the teachings, and petitioner’s characterizations of those teachings.  The Board also indicated that the petition improperly relied on incorporation by reference to the expert’s declarations to explain teachings of the references.

Praxair Distribution, Inc. v. Ino Therapeutics, Inc., IPR2015-00522, Paper 12 (PTAB July 29, 2015). The Board denied institution, in part, because petitioner did not address arguments presented during prosecution that were considered to be persuasive to the examiner in allowing the claims. During prosecution, patent owner argued that the teachings of a reference were not applicable to the claimed features. Given that the examiner found those arguments persuasive and allowed the claims, petitioner and its declarant should have addressed those arguments in the petition to show a reasonable likelihood of success on the merits.

Johns Manville Corp. v. Knauf Insulation, Inc., IPR2015-01402, Paper 18 (Oct. 21, 2015). The Board denied institution for an obviousness challenge because petitioner did not explain the differences between the asserted references and the challenged claims. One of the underlying facts necessary to evaluate obviousness is the identification of at least one difference between the claims and the asserted prior art. The responsibility falls on a petitioner to explicitly identify any differences between the claims and the asserted prior art. If a petitioner does not identify such differences, then petitioner does not satisfy its burden of showing a reasonable likelihood of success. Failure on the part of a petitioner to explicitly identify differences complicates an evaluation of obviousness. A petitioner cannot play ostrich with respect to identifying differences, or count on the Board to search a record to determine if there is any difference. A petition must make all arguments accessible to the Board, rather than ask the Board to play archaeologist with the record. Absence of an articulated difference makes it difficult for the Board to analyze whether petitioner has set out “some articulated reasoning with rational underpinning to support the legal conclusion of obviousness.”

Hewlett-Packard Co. v. U.S. Phillips Corp., IPR2015-01505, Paper 15 (PTAB Dec. 16, 2015). 37 C.F.R. § 42.20(b) expressly prohibits the filing of a motion without prior authorization.  Substantive emails to the Board merely act as an attempt to circumvent this rule. Parties are instructed to limit email communications to the Board to requests for a conference call, including only a short explanation as to why the conference call is requested, and to avoid including substantive discussions in email communications.

Intermix Media, LLC v. Bally Gaming, Inc., CBM2015-00154, Paper 10 (PTAB Jan. 20, 2016).  The Board denied institution because petitioner did not provide a complete analysis of whether the challenged claims recite patent-eligible subject matter under 35 U.S.C. § 101.  The Board determined that petitioner did not provide a credible analysis to determine whether several claim features transform the nature of the challenged claims into patent-eligible subject matter under the second step of the Alice analysis.  The Board indicated that petitioner’s failure to perform a full analysis under Alice violates the provisions of 37 C.F.R. § 42.304(b)(4) and 35 U.S.C. § 322(a)(3), which requires that the grounds of challenge be identified with particularity.

Shenzhen Huiding Tech. Co., Ltd. v. Synaptics Inc., IPR2015-01739, Paper 8 (PTAB Feb. 16, 2016).  The Board denied institution for some of the asserted grounds of challenge because petitioner improperly relied on incorporation by reference of arguments and evidence in an expert declaration.   The Board noted that petitioner referenced seven pages from an exhibit which assigns claim element numbers for each element of the identified claims.  Within the petition itself, petitioner merely refers to the claim element numbers when analyzing each claim, rather than stating expressly what claim limitation is being discussed.  The petition is unintelligible without that exhibit.  Petitioner also incorporated by reference the discussion of the level of ordinary skill in the art from the expert declaration.  The Board did not consider pages 51-60 of the petition because doing so would effectively result in a petition greater than sixty pages.

Samsung Display Co., Ltd. v. Gold Charm Ltd., IPR2015-01417, Paper 17 (PTAB Mar. 4, 2016).  The Board denied institution for anticipation challenges because petitioner improperly relied on incorporation by reference.  The petition states, without further explanation, that an asserted reference discloses the features of the claim, and then cites an expert declaration.  The petition contains no further explanation supporting that statement.  The petition merely cites the expert declaration and does not explain the significance of the cited testimony. 37 C.F.R. § 42.22(a)(2) requires a full statement of the reasons for the relief requested, including a detailed explanation of the significance of the evidence.  The Board is not required to search through the petition to map prior art disclosure with claim elements.  Without a sufficient explanation of why the asserted reference discloses the claim features, citations to an expert declaration amount to incorporation by reference of arguments made in that declaration.

Coalition for Affordable Drugs V LLC v. Hoffman-LaRoche Inc., IPR2015-01792, Paper 14 (PTAB Mar. 11, 2016).  The Board denied institution, in part, because petitioner did not sufficiently address secondary considerations evidence submitted during prosecution.  Evidence of unexpected results was apparently relied upon by the Examiner in allowing the claims at issue.  Petitioner alleged that the evidence was not commensurate in scope with the claims, but the Board disagreed.  The Board indicated that petitioner should have addressed the evidence of unexpected results in the petition as part of petitioner’s showing of a reasonable likelihood of success on the merits.

LG Elecs., Inc. v. Core Wireless Licensing S.a.r.l., IPR2015-01987, Paper 7 (PTAB Mar. 24, 2016).  The Board denied institution, in part, because the petition did not comply with the requirements of 35 U.S.C. § 311(b) and 37 C.F.R. § 42.104(b)(4).  Petitioner asserted that the challenged claims are obvious over the admitted prior art set forth in the specification of the challenged patent.  The Board determined that this ground of challenge did not comply with the requirements of 35 U.S.C. § 311 because the admitted prior art did not qualify as a patent or printed publication, and did not qualify with 37 C.F.R. § 42.104(b)(4), because the ground did not specify where each element of the challenged claims is found in the relied upon prior art patents or printed publications.

Front Row Technologies, LLC v. MLB Advanced Media, L.P., IPR2015-01932, Paper 7 (Mar. 25, 2016). The Board denied institution for several obviousness challenges because petitioner did not identify in the petition any differences between the prior art and the claims at issue, or provide a substantive analysis of why or how a person of ordinary skill in the art would have modified the prior art to render the claims obvious. The Board indicated that it was not apprised of any persuasive evidence that a person of ordinary skill at the time of the invention would have modified, selected and/or combined prior art elements in the normal course of research and development to yield the claimed invention. The petition provides simply that “it would have been obvious to a person of ordinary skill in the art at the time of the invention to combine” the prior art references to arrive at the claim features.

DirecTV, LLC v. Quiro Holdings, Inc., IPR2015-02007, Paper 6 (PTAB Apr. 4, 2016). The Board denied institution, in part, because of the petition’s practice of citing multiple pages of the declaration of petitioner’s expert “to support conclusory statements and to expand its thin analysis.” This practice amounts to incorporation by reference—which is impermissible under the Board’s rules. Second, the petition’s consistent citations to large portions of the expert’s Declaration runs afoul of the particularity and specificity required of supporting evidence under 35 U.S.C. 312(a)(3), and 37 C.F.R. §§ 42.22(a)(2), 42.104(b)(4)-(5). The Board indicated that “[t]he Petition’s vague analysis regarding the alleged teachings and suggestions of [the asserted references] that is largely divorced from the language of the particular claim elements, with imprecise allegations regarding combining these references as well as supporting citations to a web of internal cross-references and large portions of the lengthy [expert] Declaration, leaves us to play archeologist with the record.”

Dukane Corp. v. Herrmann Ultraschalltechnick GmbH & Co., KG, IPR2016-00066, Paper 7 (PTAB Mar. 30, 2016). The Board ordered patent owner to file, as an exhibit, a certificate of correction granted by the Office. Prior to filing its preliminary response, patent owner filed a request for certificate of correction without prior authorization from the Board.   Pursuant to 37 C.F.R. § 42.3, “[t]he Board may exercise exclusive jurisdiction within the Office over every involved application and patent during [a] proceeding, as the Board may order.” A proceeding means “a trial or preliminary proceeding,” and a preliminary proceeding “begins with the filing of a petition for instituting a trial and ends with a written decision as to whether a trial will be instituted.” 37 C.F.R. § 42.2. Therefore, “a patent owner is not authorized to file papers in the Office while a proceeding is pending before the Board with respect to an involved patent, except with the Board’s prior authorization.” Here, patent owner failed to seek authorization before filing the request. Further, based on the timing of the filings, petitioner did not have the benefit of having the proposed corrected claim language (or corrected claim language) at the time of filing the petition.

IGB LLC v. Trading Techs. Int’l, Inc., CBM2015-00179, Paper 39 (PTAB Apr. 15, 2016). The Board ordered petitioner to make its witness available for cross-examination. Petitioner relied on the witness’s testimony from an earlier proceeding to demonstrate that an asserted reference qualifies as a printed publication. Petitioner argued that cross-examination of a witness whose testimony was obtained during a prior proceeding is not required as routine discovery. The Board disagreed, indicating that petitioner’s reliance on the witness’s testimony is a pivotal part of petitioner’s challenge to show that the asserted reference was publicly available. It is petitioner’s responsibility to secure the availability of the witness for cross-examination by patent owner. If petitioner is unable to produce the witness, the Board will consider his unavailability in weighing his original testimony.

Gen. Elec. Co. v. Utd. Techs. Corp., IPR2016-00533, Paper 7 (PTAB June 30, 2016). In its petition, petitioner cited to an expert declaration for knowledge of one of ordinary skill in the art, and the expert’s declaration, in turn, cited to several prior art references that were not asserted in the grounds of challenge to demonstrate the level of skill in the art. The Board rejected patent owner’s argument that petitioner failed to comply with 35 U.S.C. § 312(a)(3)(A) and 37 C.F.R. § 42.104(b)(2) because it did not identify the patents or printed publications relied upon to demonstrate the level of ordinary skill in the art in the grounds of challenge. The Supreme Court has rejected “a blinkered focus on individual documents,” and instead requires “an analysis that reads the prior art in context,” taking account of, inter alia, “the background knowledge possessed by a person having ordinary skill in the art,” which may be evidenced by prior art references beyond those specifically relied upon in a ground of challenge.

Coalition for Affordable Drugs VI, LLC v. Celgene Corp., IPR2015-01092, Paper 59 (PTAB June 24, 2016).  The Board addressed patent owner’s objection to petitioner’s reply exceeding the 5,600 word limit set forth in 37 C.F.R. § 42.24(c).  Patent owner alleged that petitioner exceeded the word count by using block quotes appearing in images that were not counted by its word processor.  When certifying word count, a party need not go beyond the routine word count supplied by their word processing program. However, parties should be careful not to abuse the process. Excessive words in figures, drawings or images, deleting spacing between words, or using excessive acronyms or abbreviations for word phrases, in order to circumvent the rules on word count, may lead to dismissal of a party’s brief. The alleged discrepancy in word count is noted but, based on the record presented, no action will be taken as the noted discrepancies are not excessive and do not appear to be an attempt to circumvent the rules on word count.

Dexcowin Global, Inc. v. Aribex, Inc., IPR2016-00436, Paper 12 (PTAB July 7, 2016).  The Board denied institution for a ground of challenge in which petitioner alleged that a claim failed to comply with the requirements of 35 U.S.C. ¶¶ 1, 2, as lacking written description support and as being indefinite.  An IPR petitioner is not permitted to assert a ground of unpatentability under § 112.  35 U.S.C. § 311(b) provides that an IPR petitioner “may request to cancel 1 or more claims of a patent only on a ground that could be raised under section 102 or 103 and only on the basis of prior consisting of patents or printed publications.

Masterimage 3D, Inc. v. RealD Inc., IPR2015-00400, Paper 91 (PTAB Sept. 1, 2016).  Incorporation by reference is improper regardless of the length of the material incorporated. The number of pages is not the test. Rather, if a substantive paper, such as a petition or a patent owner response, contains a complete framework of the proponent’s contentions on an issue, then the corresponding details may be filled in by declaration testimony. Without that framework in the substantive paper, there is a problem.

Functional Claim Limitations

The following cases address the Board’s interpretation of functional limitations in challenged claims.

BlackBerry Corp. v. MobileMedia Ideas, LLC, IPR2013-00036, Paper 65 (PTAB Mar. 7, 2014).  If the scope of the claims cannot be determined without speculation, the differences between the claimed invention and the prior art cannot be ascertained.  The Board terminated the proceeding because the specification did not disclose the structure or algorithm for a computer-implemented means-plus-function element in the challenged claims.  In a means-plus-function claim in which the disclosed structure is a computer, or microprocessor, programmed to carry out an algorithm, the disclosed structure is not the general-purpose computer, but rather the special purpose computer programmed to perform the disclosed algorithm. Consequently, the specification must disclose enough of a specific algorithm to provide the necessary structure under § 112, ¶ 6.

Space Exploration Technologies Corp. v. Blue Origini LLC, IPR2014-01378, Paper 6 (PTAB Mar. 3, 2015).  The Board denied institution because petitioner did not identify the corresponding structure in the specification of the challenged patent which performs the functions for several means-plus-function limitations in the claims, as required by 37 C.F.R. § 42.104(b)(3).  Petitioner argued that the specification does not disclose structure for performing the recited functions, and urged the Board to construe the means limitations as corresponding to “any suitable structure” that performs the functions.  The Board indicated that such a construction is improper under 35 U.S.C. § 112, ¶ 6, and 37 C.F.R. § 42.100(b).  The Board agreed with petitioner that the specification does not disclose the structure for performing the recited functions.  Consequently, the Board determined that the claims are indefinite and thereby not amenable to construction.  However, the Board declined review because inter partes review is limited to anticipation and obviousness challenges under 35 U.S.C. §§ 103 and 103, not indefiniteness under 35 U.S.C. § 112.

First Data Corp. v. Coqui Technologies, LLC, IPR2015-01667, Paper 6 (PTAB Feb. 9, 2016). The Board denied institution because, contrary to petitioner’s arguments, the specification of the challenged patent does not disclose the structure corresponding to several several means-plus-function limitations in the challenged claims.  Except for a narrow exception concerning functions that are “coextensive” with a microprocessor itself, such as “processing,” “receiving” and “storing” data, a computer-implemented means-plus-function element is indefinite unless the specification discloses the specific algorithm used by the computer to perform the recited function.  Because the petition does not identify adequate structure corresponding to the means limitations, the Board does not have sufficient information to construe the claims.

Ubisoft, Inc. v. Guitar Apprentice, Inc., IPR2015-00298, Paper 24 (PTAB Apr. 1, 2016) In a final written decision, the Board reversed its previous determination in the institution decision that the “proficiency sending module” and “mode control module” limitations of the claims did not invoke 35 U.S.C. § 112 ¶ 6.  In the institution decision, the Board determined that these module limitations did not invoke § 112 ¶ 6 because there is a strong presumption that a limitation lacking the terms “means for” is not subject to § 112 ¶ 6.  However, Williamson v. Citrix Online, LLC, 792 F.3d 1339 (Fed. Cir. 2015) (en banc) expressly overruled prior decisions that applied a “strong” presumption that a limitation lacking the terms “means for” is not subject to § 112 ¶ 6.  The claimed module limitations are similar to the limitation at issue in Williamson. Each limitation replaces the term “means” with the term “module,” and recites certain functions performed by the module. The challenged patent explains that a person of ordinary skill in the art “would conceive of numerous structural means” for performing the recited functions of the claimed modules. Petitioner does not identify any corresponding structure for the module limitations. As a result, petitioner also does not show that the asserted references disclose the corresponding structure for those limitations or an equivalent. The Board determined that petitioner did not demonstrate that the claims with the module limitations are unpatentable.

Grounds of Review

The Board has the discretion to institute review on all or some of the challenged claims and on all or some of the ground of unpatentability asserted for each claim. 35 U.S.C. §§ 314(a) and 324(a); 37 C.F.R. §§ 42.108 and 42.208.

Synopsys, Inc. v. Mentor Graphics Corp., 814 F.3d 1309 (Fed. Cir. 2016).   The Board is not required to issue a final written decision for all clams challenged in a petition.  35 U.S.C. § 318(a) requires the Board to issue a final written decision with respect to “any patent claim challenged by the petitioner.”  35 U.S.C. § 318(a) only applies to claims for which the IPR was instituted, not every claim challenged in the petition.  35 U.S.C. § 314(a) allows the Board to institute inter partes review on a claim-by-claim basis.  The decision of the Board to institute review as to some or all claims challenged is not reviewable under § 314(d).  A final written decision will have a limited estoppel effect for claims whose review the Board did not institute.

10X Genomics, Inc. v. Raindance Technologies, Inc., IPR2015-01558, Paper 18 (PTAB Feb. 24, 2016). The Board denied patent owner’s request for rehearing of the decision instituting review. “The Decision was issued pursuant to the Board’s authority under 35 U.S.C. § 314(a) and 37 C.F.R. § 42.108(a) and (c)…Under these provisions, the Board may institute inter partes review based on the information presented in the petition. That is, none of these provisions precludes the Board from instituting inter partes review of a challenged claim based on a ground of unpatentability that is implicitly, but not explicitly, raised in a petition.” Citing the Federal Circuit’s decision in SightSound Techs., LLC v. Apple Inc., the Board does not exceed its authority by considering whether challenged claims are unpatentable based on obviousness, where the petition asserts anticipation, but not obviousness, as to those claims. The obviousness grounds are based upon the same arguments and evidence that petitioner presents with respect to anticipation. Patent owner addressed these arguments in its preliminary response, and the Board considered patent owner’s arguments before instituting review. Patent owner will have another full and fair opportunity to respond to these challenges in its patent owner response.

Sandisk Corp. v. Netlist, Inc., IPR2014-00970, Paper 34 (PTAB Apr. 27, 2016). Petitioner challenged several claims as being unpatentable over the Huang and Tsern references. In the institution decision, the Board denied institution of review of those claims as being unpatentable over the Huang and Tsern references, but instituted review of the claims as being obvious over Huang alone. In the final written decision, the Board faulted petitioner for not identifying support in the petition for unpatentability of the claims based on Huang alone, and determined that petitioner’s reply exceeded the proper scope of a reply. Petitioner requested rehearing. In denying rehearing, the Board indicated that petitioner’s arguments are based on an underlying contention that, because the Board sua sponte raised a patentability challenge based on Huang alone, whereas petitioner’s challenge was based on a combination of Huang and Tsern, the Board relied on evidence that was not cited in the petition. The Board, however, indicated that petitioner did not identify any indication in the institution decision where the Board relied on evidence other than that expressly cited by petitioner. The Board was not persuaded of error in its determination that petitioner’s arguments and evidence in the reply are outside the scope of a proper reply because they do more than merely address patent owner’s argument that the petition does not identify a disclosure or suggestion of the limitations of the challenged claims. Rather, petitioner’s reply attempted to provide a new theory for modifying Huang that was not set forth clearly in the petition.

SATA GmbH & Co. KG v. Anest Iwata Corp., IPR2015-01790, Paper 14 (PTAB Feb. 19, 2016) Petitioner challenged claims 15-22 as being “not new under 35 U.S.C. § 101” over claims 1-14 of the same patent which were determined to be unpatentable in a previous IPR proceeding. The Board denied institution for this challenge because it did not present a proper basis for instituting inter partes review under 35 U.S.C. § 311.  § 311(b) provides that a petitioner may challenge a patent only a ground that could be raised under § 102 or § 103 and only on the basis of prior art consisting of patents or printed publications.

Par Pharmaceutical, Inc. v. Novartis AG, IPR2016-00084, Paper 21 (PTAB June 30, 2016) The Board denied patent owner’s request for rehearing of the institution decision.  The Board disagreed with patent owner’s argument that the Board erred in not specifically addressing all of patent owner’s arguments in the preliminary response.  The Board indicated that it is not required to “address every argument raised by a party or explain every possible reason supporting its conclusion.”  Synopys, Inc. v. Mentor Graphics Corp., 814 F.3d 1309, 1322 (Fed. Cir. 2016).  “This is especially true in the context of an institution decision, where the Board’s findings are preliminary and its determination whether a reasonable likelihood of prevailing exists is not subject to appellate review.”

South-Tek Sys., LLC v. Engineered Corrosion Sols., LLC, IPR2016-00136, Paper 24 (PTAB Aug. 8, 2016) In denying patent owner’s request for rehearing of the decision granting institution, the Board rejected patent owner’s argument that it improperly relied on portions of an asserted reference not cited in the petition.  The Board is entitled to rely on its own reading of the evidence to explain or support its analysis, and to determine the merits of the parties’ positions.  At the institution stage, the Board is not changing the theories of the trial, because there is no trial until after the institution stage.  The Board’s decision was based on the same combination of references set forth in the petition.  Patent owner has an opportunity to respond to the petition and the institution decision in the patent owner’s response.  The parties are on notice of the issues to be addressed during the trial.

Maxlinear, Inc. v. Cresta Tech. Corp., IPR2015-00594, Paper 90 (PTAB Aug. 15, 2016) The Board declined to consider petitioner’s arguments in the petitioner reply that an asserted reference qualified as prior art under 35 U.S.C. § 102(a) and therefore made the reference ineligible for disqualification under 35 U.S.C. § 103(c).  Patent owner argued that the petition did not assert § 102(a), and no ground of unpatentability was instituted on § 102(a).  Petitioner’s argument is not prohibited by 37 C.F.R. § 42.23(b) because it is in response to patent owner’s argument in the response that the reference was not prior art under § 102(a).  However, that does not end the inquiry.  Prior to filing its petition, petitioner knew from patent owner’s contentions in the ITC proceeding that the safe haven of § 103(c) was a potential issue.  Even armed with this knowledge, petitioner chose not assert in the petition that the asserted patent is prior art under § 102(a).  Adding consideration of § 102(a) at this late date would deprive patent owner of due process.  On this basis, the Board declined to consider petitioner’s argument that the asserted reference qualifies as prior art under § 102(a).

Masterimage 3D, Inc. v. RealD Inc., IPR2015-00400, Paper 91 (PTAB Sept. 1, 2016) In denying patent owner’s request for rehearing a final written decision finding the challenged claims unpatentable, the Board rejected patent owner’s argument that the petition was deficient for not setting forth a prima facie case of obviousness.  Whether petitioner made a prima facie case of obviousness is a non-issue and can be characterized fairly as a red herring. After institution of trial in an IPR, and at the stage of rendering a final written decision, the question is whether, on the basis of the entirety of the evidence before the Board, both for and against obviousness, petitioner has proved unpatentability by a preponderance of the evidence. At the stage of the final written decision, whether petitioner presented a prima facie case, in the petition alone, is not the issue.

Oxford Nanopore Techs. Ltd. v. Univ. of Wash., IPR2014-00513, Paper 55 (PTAB May 20, 2016). The Board denied petitioner’s request to dismiss grounds of challenge once the Board determined that petitioner had not demonstrated that references asserted in the grounds of challenge did not qualify as printed publications. Petitoner argued that once the Board determined that the asserted reference did not qualify as printed publications, the Board should have dismissed those grounds for lack of jurisdiction, since the Board may only consider challenges based on patents and printed publications under 35 U.S.C. § 311(b). Citing the Board’s precedential decision in Lumentum, IPR2015-00731, Paper 39 (PTAB Mar. 2, 2016), § 311(b) does not define the Board’s jurisdiction. “§ 311(b) is a limitation on the grounds of unpatetentability that petitioner may advance in its petition and says nothing about whether or when the Board may exert jurisdiction over the petition.”

Tyco Fire Prods. LP v. Victaulic Co., IPR2016-00278, Paper 13 (PTAB Sept. 7, 2016). The Board denied petitioner’s request for rehearing of the Board’s decision to not institute review of independent claims 1 and 9 on an obviousness ground despite instituting review for dependent claims 2 and 10, which depend from claims 1 and 9, respectively, on that obviousness ground. The Board has discretion to institute trial on an independent claim not challenged in a petition if the Board institutes trial on a claim that depends from the independent claim. Discretion to institute is not an obligation to institute. If, at the end of trial in the IPR proceeding, dependent claims 2 and 10 are determined to be unpatentable, that determination will extend to independent claims 1 and 9. The converse, however, is not true. If the Board determines that petitioner has not demonstrated that claims 2 and 10 are unpatentable, that determination does not extend to broader independent claims 1 and 9. Petitioner, however, did not challenge claims 1 and 9 on the obviousness grounds instituted for claims 2 and 10. Instituting trial for claims 1 and 9 would require both speculation by the Board as to petitioner’s position and a search of the record for evidence to support the Board’s speculation. Neither speculation as to petitioner’s position nor a search through the record for evidence to support petitioner’s position is the role of the Board.

Innovative Environmental Techs., Inc. v. Peroxychem LLC, IPR2016-00198, Paper 17 (PTAB July 25, 2016) In rendering a decision to institute, the Board need not address every possible issue and take a position on every potential theory of unpatentability.  Rather, the Board determines whether the record, at the time, establishes a reasonable likelihood of success.  The standard for institution of an inter partes review requires nothing more.

Indefiniteness

In IPR proceedings, petitioners may challenge claims only on a ground that could be raised under 35 U.S.C. § 102 or § 103.  In CBM and PGR proceedings, petitioner may challenge claims on grounds that can be raised under 35 U.S.C. § 101, § 102. § 103 or § 112.  The following cases address the Board’s interpretation of indefiniteness issues under 35 U.S.C. § 112.

Blackberry Corp. v. MobileMedia Ideas, LLC, IPR2013-00036, Paper 65 (Mar. 7, 2014). The Board terminated the IPR proceeding because the specification of the challenged patent did not disclose a specific algorithm to perform the recited function of a computer-implemented means plus-function term.  The Board indicated that due to the indefiniteness of the claim, the Board was unable to reach a determination on the asserted grounds of unpatentability over the prior art.

Ericsson Inc. v. Intellectual Ventures II LLC, IPR2014-01170, Paper 9 (PTAB Feb. 17, 2015) The Board denied institution with respect to a claim which recites the term “logic for.”  Although the claim does not recite any “means” features, the Board determined that the claim overcame the presumption that it should not be interpreted as a means-plus-function claim under 35 U.S.C. § 112, ¶ 6, because the claim did not recite any structure for performing the recited function.  The Board determined that neither petitioner nor patent owner identified any algorithm for performing the functions contained in the limitations of the claim.  Therefore, the Board denied institution because the claim is indefinite.

Boku, Inc. v. Zilidev, Inc., CBM2014-00140, Paper 24 (PTAB Nov. 2, 2015).  The Board determined that a claim reciting a means-plus-function limitation was indefinite because the specification does not provide sufficient structure corresponding to the function.  If a person of ordinary skill in the art would be unable to recognize the structure in the specification and associate it with corresponding function in the claim, a means-plus-function limitation is indefinite.

Globus Medical, Inc., v. Flexuspine, Inc., IPR2015-01830, Paper 11 (PTAB Feb. 25, 2016).  The Board denied institution because the construction of a claim term could not be reasonably determined.  If the scope of the claims cannot be determined without speculation, the differences between the claimed invention and the prior art cannot be ascertained.  The Board disagreed with the respective constructions of both petitioner and patent owner. The Board determined that petitioner’s construction was inconsistent with the disclosed embodiments.  The Board determined that patent owner’s construction was inconsistent with the arguments patent owner made during prosecution when it introduced the unclear term, which appears only in the claims.

Westerngeco, L.L.C. v. PGS Geophysical AS, IPR2015-00309, Paper 42 (PTAB June 8, 2016) In a final written decision, the Board sua sponte dismissed the petition with respect to dependent claims 18-20.  Although not challenged by the parties, the Board determined that these claims do not further limit the claim from which they depend.  The Board indicated that it could not correct the dependencies because it would be subject to reasonable debate. The Board therefore determined that it could not correct the improper dependencies of the claims because the claims fail to meet the requirements of 35 U.S.C. § 112, ¶¶ 2 and 4.

Dexcowin Global, Inc. v. Aribex, Inc., IPR2016-00436, Paper 12 (PTAB July 7, 2016). In its petition, petitioner challenged claim 3 as being indefinite under 35 U.S.C. § 112, ¶ 2.  The Board declined to institute review for claim 3 because a petitioner is not permitted to assert a ground of unpatentability under § 112 in an IPR.  Under 35 U.S.C. § 311(b), a petitioner may only challenge claims on a ground that could be raised under § 102 or § 103 and only on the basis of prior art consisting of patents or printed publications.

Inherency

The following cases address the Board’s interpretation of inherency arguments in grounds of challenge.

Tietex Int’l, Ltd. v. Precision Fabrics Group, Inc., IPR2014-01248, Paper 39 (PTAB Jan. 27, 2016) The Board determined that petitioner had not met its burden to establish that a claimed value would inherently result from the structure of the combined references. Petitioner argued that during prosecution of a related parent application, the Board determined that it would have been obvious to combine prior art references to obtain the claimed value.  The Board’s prior decision during examination, which sustained the Examiner’s findings, did not establish that the claimed value was inherent.  Citing the Federal Circuit’s Dynamic Drinkware decision, the Board stated that, unlike during examination, the burden of proof is on the petitioner to prove unpatentability, and that burden never shifts to the patent owner.  Thus, in order to prevail, petitioner must provide evidence establishing that the claimed value is inherent in the prior art. Petitioner cannot, as an examiner can, establish unpatentability of the challenged claims based on the presumption that the structure of the combined references would necessarily possess the claimed properties.  Allowing Petitioner to rely solely on a presumption of inherency would improperly shift the burden to patent owner to establish that the claimed properties are not necessarily present in the prior art.   The Board noted that petitioner’s expert provided testimony with the petitioner reply to establish that the claimed value would be inherent, but the Board rejected this evidence because it was not presented in the petition.

Toshiba Corp. v. Optical Devices, LLC, IPR2014-01446, Paper 31 (PTAB Mar. 9, 2016) The Board disagreed with petitioner’s arguments that a reference inherently disclosed a claim feature.  The Board focused on the deposition testimony of petitioner’s expert who testified that the reference was “probably using” the claimed feature, and that it was “not much of a leap for me to conclude” that the reference was using the claim feature.  Inherency cannot be established by probabilities or possibilities.  The Board also indicated that the declaration testimony of petitioner’s expert did not base his opinion on inherency with evidence.  Therefore, the Board did not give the expert’s testimony on inherency persuasive weight.

Unified Patents Inc. v. Dragon Intellectual Property, LLC, IPR2014-01252, Paper 64 (PTAB Feb. 5, 2016) The Board agreed with petitioner’s arguments that a limitation in the challenged claims would have been inherent in a prior art reference.  In an obviousness analysis, it is proper to use inherency to account for a claim limitation that is not expressly disclosed by the prior art. However, the application of inherency is limited in an obviousness analysis to situations where the limitation at issue is the “natural result” of the combination of prior art elements.  In this case, the Board determined that a relied-upon reference inherently disclosed a control circuit to perform its disclosed functions.

I-Blason LLC v. Aevoe Corp., IPR2016-00231, Paper 6 (PTAB May 18, 2016) The Board denied institution for an anticipation challenge that relied on a theory of inherency for achieving a claimed functional feature.  In order to demonstrate that a reference inherently discloses a claim element, petitioner must show that the reference necessarily functions in accordance with, or includes the claimed limitation.  The Board determined that the evidence, as presented by petitioner, only indicates that, at best, the functionality may be present, and other credible evidence provided by patent owner suggests that the claimed feature may not be present. Petitioner has therefore not demonstrated that the claimed functional limitation would be inherent from the asserted reference, as required for a ground based on anticipation.

Joinder

Under 35 U.S.C. §§ 315(c) and 325(c), petitioners may file a motion to join another instituted proceeding.  The one-year time bar of 35 U.S.C. §§ 315(b) and 325(b) does not apply to joinder.

Kyocera Corp. v. Softview LLC, IPR2013-00004, Paper 15 (PTAB Apr. 24, 2013) In determining whether to grant a motion for joinder, the Board considers factors such as the timing and impact of joinder on the trial schedule, cost, and whether briefing and/or discovery may be simplified to minimize trial impact.  The Board held that a party seeking joinder should identify whether any new grounds of unpatentability are being raised in the concurrently-filed petition.

Sony Corp. v. Network-1 Sec. Solutions, Inc., IPR2013-00386, Paper 16 (PTAB July 29, 2013) (Paper 16).  The Board held that joinder in an IPR may be warranted in certain circumstances, but is not required in any. “The Board will determine whether to grant joinder on a case-by-case basis, taking into account the particular facts of each case, substantive and procedural issues, and other considerations.”

Fifth Third Bank v. Stambler, IPR2014-00244, Paper 4 (PTAB Dec. 17, 2013) Petitioner’s motion for joinder was denied because the parties involved in the earlier proceeding to which petitioner sought to join reached a settlement. Thus, the Board terminated the earlier proceeding before the Board issued an institution decision in the earlier proceeding.  The Board noted that petitioner was time barred and waited to file its petition depending on whether the earlier proceeding had been instituted.  By doing so, petitioner took a risk that the earlier proceeding would not be instituted.  Under 35 U.S.C. § 315(c), joinder is only permitted to a previously instituted case.

Enzymotec Ltd. v. Neptune Techs. & Bioresources, Inc., IPR2014-00556, Paper 19 (PTAB July 9, 2014) A motion for joinder should: (1) set forth the reasons why joinder is appropriate; (2) identify any new grounds of unpatentability asserted in the petition; (3) explain what impact (if any) joinder would have on the trial schedule for the existing review; and (4) address specifically how briefing and discovery may be simplified.

Target Corp. v. Destination Maternity Corp., IPR2014-00508, Paper 28 (PTAB Feb. 12, 2015) In a decision on rehearing, an expanded panel of the Board narrowly (4-3) decided to allow “issue joinder” for the same petitioner.  In “issue joinder,” the petitioner seeks to join, under 35 U.S.C. § 315(c), an earlier-filed petition filed by the same petition with different grounds of challenge than those presented in the later petition.  The expanded panel granted petitioner’s request for rehearing of the Board’s original decision to deny institution and joinder of the later-filed petition, which was filed after the one-year bar date of § 315(b).  The Board interpreted §315(c)’s provision of “any person who properly files a petition under section 311” as permitting issue joinder by the same petitioner.

Samsung Electronics Co. Ltd. et al. v. Affinity Labs of Texas, LLC, IPR2015-00820, Paper 12 (PTAB May 15, 2015) The Board denied petitioner’s motion for joinder on the basis that petitioner had used prior institutions decisions as a road map to present new challenges.  Petitioner had previously filed three petitions against the same patent with varied challenges.  The Board instituted trials based on all three petitions but not for some of the challenged grounds.  The Board denied joinder of the new, fourth petition with one of the earlier petitions because petitioner did not persuasively explain why, using reasonable efforts, it could not have found the newly relied-upon reference.  The Board determined that petitioner sought to use a prior institution decision as a guide to remedy deficiencies in the earlier petition.  The Board held that allowing petitioner another chance to argue the unpatentability of the challenged claims would not lead to the just, speedy and inexpensive resolution of the instituted proceedings. Thus, the additional burden on the Board and patent owner was not justified.

Atoptech, Inc. v. Synopsys, Inc., IPR2015-00760, Paper 14 (PTAB July 21, 2015) The Board denied petitioner’s motion for joinder of a second petition with a trial instituted in response to a first petition.  The second petition was filed by the same petitioner against two claims for which the Board denied institution in response to the first petition, based on the Board’s disagreement with petitioner’s proposed claim construction.  The Board determined that petitioner used the institution decision as a guide to present new arguments and new reasoning to address the Board’s claim construction in the first institution decision.  The Board disagreed with petitioner’s arguments that it could have not foreseen the Board’s claim construction in the first institution decision, and determined that petitioner should not be permitted a second bite at the apple because the second petition simply presents arguments that reasonably could have been made in the earlier petition but were not.   “[P]ermitting second chances without constraint undermines judicial efficiency by expending the Board’s limited resources on issues that were not presented adequately the first time around.”

Zhongshan Broad Ocean Motor Co. v. Nidec Motor Corp., IPR2015-00762, Paper 16 (PTAB Oct. 5, 2015)  In a decision granting rehearing of the Board’s denial of institution and joinder, an expanded panel (3-2) determined that petitioner could join an earlier petition previously filed by the same petitioner despite the later petition being filed after the one-year time bar of § 315(b).  The Board determined that § 315(c) permits the joinder of any person who properly files a petition under § 311, including a petitioner who is already a party to an earlier instituted IPR.  § 315(c) “encompasses both party joinder and issue joinder, and, as such, permits joinder of issues, including new grounds of unpatentability.”  The Board previously denied the challenge presented in the later petition because petitioner did not submit the required affidavit concerning a certified translation of a foreign document.  The Board indicated that “[t]he public interest in securing the just, speedy, and inexpensive resolution of every proceeding would be served in this case more fully by considering the merits of the asserted ground of unpatentability… rather than by denying consideration for reasons tied to Petitioner’s previous failure to submit the requisite attesting affidavit.”

ZTE Corp. v. Adaptix, Inc., IPR2015-01184, Paper 12 (PTAB Oct. 12, 2015) A petition filed more than one year after service of a complaint is time-barred under § 315(b) if the motion for joinder is denied.  The mere accompaniment of a request for joinder with a petition does not nullify the § 315(b) time bar.

Qualcomm Inc. v. Bandspeed, Inc., IPR2015-00314, Paper 21 (PTAB Nov. 16, 2015) The Board permitted joinder of petitioner to a previously instituted IPR proceeding despite the fact that, while the parties were briefing the motion for joinder, patent owner settled with all petitioners in the previously instituted IPR proceeding.  Patent owner argued that, absent joinder, petitioner in the present IPR proceeding would be time barred, and that joinder should be denied because it would require significant adjustment to the trial schedule. The Board disagreed with patent owner’s arguments, indicating that petitioner agreed to follow the trial schedule from the previously instituted proceeding and that petitioner did not present any new challenges on patentability.  The Board determined that granting joinder would not discourage settlement in multi-defendant cases.

LG Electronics, Inc. v. ATI Technologies ULC, IPR2015-01620, Paper 10 (PTAB Feb. 2, 2016) The Board denied petitioner’s motion for joinder because petitioner did not demonstrate why it could not have presented the new challenges in an earlier petition.  After petitioner filed a first petition challenging two claims, the Board instituted trial for one of the claims, but not the second claim.  After institution, petitioner filed a second petition with modified grounds of unpatentability for the second claim.  The Board determined that joinder was not appropriate because the second petition used the earlier institution decision as a guide to remedy deficiencies in the first petition. Although there may be efficiencies to gain from addressing the same claims in an IPR that are at issue in pending district court litigation, permitting second chances without constraint undermines judicial efficiency by expending the Board’s resources on issues that were not adequately presented the first time.

Intermix Media, LLC v. Bally Gaming, Inc., CBM2015-00154, Paper 11 (PTAB Feb. 19, 2016). The Board denied institution for all grounds of challenge, and petitioner requested rehearing. Petitioner asked the Board if it could file a motion for joinder while the rehearing was pending. The Board instructed petitioner to wait to file its motion for joinder pending the outcome of the rehearing decision. In the event that rehearing is granted and the proceeding is instituted, petitioner may then again seek authorization to file a motion for joinder.

Lupin Ltd. v. Seju Pharmaceutical Co., Ltd., IPR2015-01871, Paper 13 (PTAB Jan. 25, 2016) The Board authorized joinder for a later-filed petition that presented substantially the same arguments and evidence as an earlier petition that was instituted by the Board. Patent owner opposed joinder on the basis that the later petitioner relied on a different expert than in the earlier proceeding.  The later petitioner agreed to take a back-seat role and rely on the testimony of the earlier petitioner’s expert, and to only take a primary role if the earlier petitioner ceased to participate.  The Board authorized joinder, indicating that the interests of efficiency and speed in the resolution of the proceeding outweighed any prejudice to patent owner.

Ubisoft, Inc. v. Uniloc USA, Inc., IPR2016-00414, Paper 16 (PTAB June 2, 2016).  The Board denied a motion for joinder and the associated petition because the instituted proceeding that petitioner sought to join had terminated. The associated petition was denied as being time barred under 35 U.S.C. § 315(b).  In addition, the Board denied the petition on the basis that the asserted challenges could have been presented in the earlier petition.

Jurisdiction

The following cases address the Board’s jurisdiction to review certain challenges in IPR, CBM and PGR proceedings.

Samsung Elecs. Co., Ltd. v. E-Watch, Inc., IPR2015-00612, Paper 8 (PTAB July 8, 2015) Petitioner argued that the challenged patent was not entitled to the earlier filing date of a parent application because of a lack of co-pendency between the parent application and the child application that resulted in the challenged patent. The Board held that it did not have jurisdiction to review a decision by the PTO to revive the parent application.  Not all issues having an impact on the determination of patentability are the same.  Where the issue is the status of an applied reference as prior art, viewed in light of a patent owner’s effort to antedate the reference, the Board can review the evidence submitted to determine whether the patent owner is entitled to a date of invention prior to the critical date of the reference.  That issue is substantive and central to the merit of the patentability determination.  However, where the issue is procedural, such as whether an application is abandoned or revived, the Board does not have jurisdiction to review that issue because it is not central to the patentability determination.

SAP Am., Inc. v. Arunachalam, IPR2014-00414, Paper 24 (PTAB Aug. 17, 2015).  In an IPR, the Board does not have jurisdiction to review whether a claim complies with the requirements of 35 U.S.C. § 112.  The Board can review whether the subject matter of a claim is supported in an ancestral application to determine whether the claim is entitled to the earlier effective filing date of the ancestral application for prior art purposes.  “A review of the disclosure for purposes of identifying the priority date for the claimed subject matter is appropriate and within the scope of inter partes review.”

Elekta, Inc. v. Varian Medical Systems, Inc., IPR2015-01401, Paper 19 (PTAB Dec. 31, 2015). The Board held that the requirement of “35 U.S.C. § 312(a)(2) [to identify all real parties-in-interest in the petition] does not define our jurisdiction with respect to inter partes review proceedings.” The Supreme Court’s bright line test for determining whether a statutory limitation is jurisdictional turns on whether Congress has clearly stated that the rule is jurisdictional.  Absent such a clear statement, a statutory restriction should be treated as non-jurisdictional in character.  The Board indicated that § 312(a)’s emphatic “may be considered only if” language does not make those requirements jurisdictional.  The Board also noted that the time-bar of § 315(b) does not implicate the Board’s jurisdiction because the time bar “does not itself give the Board the power to invalidate a patent.”

Symantec Corp. v. Finjan, Inc., IPR2015-01895, Paper 7 (PTAB Feb. 26, 2016) The Board held that it did not have jurisdiction to determine whether patent owner engaged in inequitable conduct.  The Board indicated that it is not a court of general jurisdiction, but an administrative tribunal with limited jurisdiction (citing 35 U.S.C. § 311(b) (providing inter partes review only on a ground that could be raised under section 102 or 103 and only on the basis of prior art consisting of patents or printed publications)).

Lumentum Holdings, Inc. v. Capella Photonics, Inc., IPR2015-00731, Paper 39 (PTAB Mar. 2, 2016) (precedential).  The Board adopted the ruling in Elekta, IPR2015-01401, Paper 19 (PTAB Dec. 31, 2015), and rejected patent owner’s argument that 35 U.S.C. § 312(a)(2) is a jurisdictional provision.  The Board indicated that § 312(a) sets forth requirements that must be satisfied for the Board to give consideration to a petition.  However, a lapse in compliance with those requirements does not deprive the Board of jurisdiction over the proceeding, or preclude the Board from permitting such lapse to be rectified.  Simply stating that an issue is a “threshold” issue does not make it “jurisdictional,” nor does the timing of the institution decision.

Mandatory Notices

37 C.F.R. § 42.8 provides that petitioners and patent owners must identify each real party-in-interest for that party, related matters including any other judicial or administrative matter that would affect, or be affected by, a decision in the proceeding, and counsel and service information.  Petitioners are required to file their mandatory notices as part of the petition, and patent owners are required to file their mandatory notices within 21 days of service of the petition.  If the information required to be identified in 37 C.F.R. § 42.8(b) changes, updated mandatory notices are required to be filed within 21 days of the change.

Biodelivery Sciences Int’l, Inc. v. Monosol RX, LLC, IPR2015-00165, Paper 66 (PTAB Feb. 11, 2016) The Board expunged petitioner’s updated mandatory notice for being improperly argumentative.   Rather than merely identifying an allegedly related Board inter partes reexamination decision, the mandatory notice quoted portions of the decision that were considered pertinent and implicitly explained why those portions were relevant to the IPR proceeding.  An appropriate notice simply would have noted that the Board issued a decision in a related proceeding.  Petitioner should not have turned the mandatory notice into a briefing opportunity to advocate the conclusion it urges in the IPR proceeding.

Masterimage 3D, Inc. v. RealD Inc., IPR2015-00040, Paper 81 (PTAB Jan. 14, 2016) The Board expunged patent owner’s supplemental mandatory notices because patent owner turned the mandatory notices into a briefing opportunity to advance the conclusion it urges in the matters pending before the Board.  Patent owner misused the filing of a mandatory notice under 37 C.F.R. § 42.8(b)(2) with regard to related matters by specifically highlighting and discussing the substantive content of an initial determination in an ITC proceeding.  An appropriate notice simply would have noted that an initial determination was made in the ITC proceeding.

InnoPharma Licensing, Inc. v. Senju Pharmaceutical Co., Ltd., IPR2015-00902, Paper 82 (PTAB Apr. 18, 2016) The Board expunged the trial transcript from a related district court litigation that was submitted with patent owner’s updated mandatory notices. Although the Board’s rules contemplate a motion for late submissions of supplemental information, “more than one month after the date the trial is instituted,” a party contemplating such a motion “must request authorization to file a motion to submit the information.” The rule relating to updated mandatory notices is not an alternative vehicle by which a party may introduce supplemental information into the record. The Board expunged the trial transcript, noting that patent owner did not request authorization to submit the trial transcript.

Aerospace Comms. Holdings Co., Ltd. v. The Armor All/Step Prods. Co., IPR2016-00441, Paper 7 (PTAB May 20, 2016). The Board ordered additional briefing concerning petitioner’s request to submit amended mandatory notices. Petitioner requested the Board’s permission to update the real party-in-interest (RPI) identification in its mandatory notices to include two additional entities.  Petitioner asserted a factual and legal basis as to why those two entities were not identified as RPIs at the time the petition was filed, but after considering patent owner’s preliminary response, petitioner indicated that it would be willing to list them as RPIs to reduce the issues in dispute.  Patent owner opposed petitioner’s request as being contrary to the Board’s rules, and argued that no adequate basis existed to waive those rules.   The Board ordered petitioner to identify the explicit basis in the rules that provided the Board with authority to authorize petitioner’s request, or provide an explanation as to why specific rules should be waived.

Motion to Amend

During a trial, a patent owner may file a conditional motion to amend one or more claims of the patent.  The motion to amend is only considered if the Board determines that the challenged claims are unpatentable.  35 U.S.C. § 316(d) (IPR proceedings) and 35 U.S.C. 326(d) (CBM and PGR proceedings).  Below are PTAB cases and Federal Circuit appeals addressing motions to amend.

Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292 (Fed. Cir. 2015). The court reversed the Board’s construction of a term, determining that it was unreasonably broad because it did not reflect the language of the disclosure. The court affirmed the Board’s requirement for motions to amend that patent owner must demonstrate that the amended claims are patentable over all the prior art of record, not just prior art that the Board relied upon when instituting review. The Federal Circuit approved the Board’s interpretation of its regulations as set forth in Idle Free Sys., Inc. v. Bergstrom, Inc., IPR2012-00027, Paper 26 (PTAB June 11, 2013) (informative), in which the Board specified that patent owner must demonstrate “a patentable distinction over the prior art of record and also prior art known to the patent owner.”

Prolitec, Inc. v. ScentAir Techs., Inc., 807 F.3d 1353 (Fed. Cir. 2015). The Board may require a patent owner to, in a motion to amend, distinguish the proposed substitute claims over the prior art from the original prosecution, in addition to the prior art of record in the IPR proceeding.

Nike, Inc. v. Adidas AG, 812 F.3d 1326 (Fed. Cir. 2016) In AIA post-grant proceedings, patent owner bears the burden of proof to demonstrate that the proposed substitute claims are patentable over the prior art of record in the IPR proceeding as well as prior art known to patent owner.  With regard to prior art not of record, patent owner can satisfy its burden of proof as well as its duty of candor and good faith by providing arguments why the proposed claims are patentable over prior art known to patent owner.

Veritas Techs. LLC v. Veeam Software Corp., Appeal No. 2015-1894 (Fed. Cir. Aug. 30, 2016) While affirming the Board’s determination that the challenged claims are obvious, the Federal Circuit vacated the Board’s denial of patent owner’s motion to amend, holding that the denial was “unreasonable” and “arbitrary and capricious.”  The Federal Circuit reviews the Board’s decisions on motions to amend under the Administrative Procedure Act.  The court faulted the Board for denying the motion based on its insistence that patent owner discuss whether each newly added feature was separately known in the prior art.  The Board denied the motion because patent owner discussed the proposed new features in combination with other known features.  The Federal Circuit indicated that it could “not see how the Board could reasonably demand more from Veritas in this case.”  The court indicated that patent owner’s discussion of the proposed new features in combination with other known features was not “meaningfully different from describing what is new about the proposed claims, even in comparison to the unamended claims.”  The court noted well-settled precedent that “novel and nonobvious inventions often are only a combination of known individual features.”

Nichia Corp. v. Emcore Corp., IPR2012-00005, Paper 27 (June 3, 2013) (representative) A motion to amend claims must clearly identify the written description support for the proposed substitute claims. Patent owner is required to set forth, for each proposed substitute claim, written description support in the original disclosure of the application that issued as the patent for each proposed substitute claim, unless patent owner, in its motion, indicates that there was no change to the original disclosure when the patent issued.  Citations to a prior application are relevant only for the benefit of an earlier-filed disclosure, and not for the written description support for the proposed substitute claims.  Merely indicating whether each claim limitation is individually described in the original disclosure may be insufficient to demonstrate support for the claimed subject matter as a whole.  If the claim language does not appear in the same words in the original disclosure, a mere citation to the original disclosure, without any explanation as to why a person of ordinary skill in the art would have recognized that the inventor possessed the claimed subject matter as a whole, may be inadequate.

Idle Free Systems, Inc. v. Bergstrom, Inc., IPR2012-00027, Paper 26 (PTAB June 11, 2013) (informative) A patent owner seeking to amend its claims must first confer with the Board about the specific amendments contemplated, and may only present a reasonable number of substitute claims (presumptively, one substitute claim for each challenged claim).  In its motion to amend, patent owner must distinguish the amended claims over (1) the prior art of record and (2) prior art known to the patent owner.  This includes addressing the basic knowledge and skill set possessed by a person of ordinary skill in the art without reliance on any particular item of prior art.  Patent owner must also show that there is no broadening of scope of the claims, and that the proposed claims are supported adequately by the written description of the original application as filed.

CBS Interactive Inc. v. Helferich Patent Licensing, LLC, IPR2013-00033, Paper 122 (Mar. 3, 2014) The Board denied patent owner’s motion to amend for failing to demonstrate the patentability of the proposed claims.  The Board determined patent owner did not identify how new claim terms should be construed under 35 U.S.C. § 112, ¶ 6, which does not provide the Board with sufficient information to determine whether the proposed claims are patentable.   Patent owner did not demonstrate written description support with respect to the original application that issued as the challenged patent.  The specification of the patent is not the original disclosure, and patent owner did not demonstrate support in the earlier applications from which priority is sought.  The Board also determined that patent owner did not meet its burden in demonstrating patentability of the claims.  Patent owner’s analysis is limited to whether individual references disclose the new feature, not whether the proposed claims would have been nonobvious over the prior art.  Anticipation and obviousness are separate conditions of patentability, requiring different tests and different elements of proof.

Xilinx, Inc. v. Intellectual Ventures I LLC, IPR2013-00029, Paper 49 (PTAB Mar. 10, 2014) The Board denied patent owner’s motion to amend because patent owner did not provide a claim construction for new limitations in the proposed claims and did not account sufficiently for the basic knowledge and skill set possessed by a person of ordinary skill in the art in its arguments for why the proposed claims are patentable.  Patent owner asserted that new limitations in the proposed claims should be given their plain and ordinary meaning without providing an explicit construction.  The Board indicated that such a general construction was insufficient to demonstrate patentability.  Concerning patentability over the prior art, the Board indicated that the proposed claims included several standard components known in the art, but did not provide a discussion about why one skilled in the art would not have known about those components and why it would not have been obvious to combine those components with the features of the original patent claims.

Bloomberg Inc. et al. v. Markets-Alert Pty Ltd., CBM2013-00005, Paper 71 (PTAB Mar. 26, 2014). Patent owner filed a motion to amend which requested cancellation of the original claims and addition of new claims. Since the request to cancel claims was not based on the contingency of whether the proposed new claims would be added, the Board interpreted patent owner’s request as unequivocally requesting cancellation of the original claims.  The Board determined that the motion to amend was deficient for several reasons. First, the Board faulted patent owner for only identifying support in the specification for the new features of the claims, rather than the entirety of the new claims. Second, the Board faulted patent owner for not providing a construction for certain terms, instead providing a construction of what the terms did not mean. Without such an explanation, the Board could not determine whether there was written description support for the claim language. Third, patent owner did not explain how the removal of a limitation in the original claims would convey to one skilled in the art that the inventor had possession of the broader concept in the new claims. Fourth, the Board determined that the proposed claims did not address the grounds of invalidity alleged in the petition, particularly since the proposed claims were broader than the original claims. Fifth, patent owner did not identify, on a one-by-one basis, which claims were being substituted.

Int’l Flavors & Fragrances Inc. v. The United States of America, IPR2013-00124, Paper 12 (PTAB May 20, 2014) (informative). As the moving party, patent owner bears the burden of proof to establish that it is entitled to the relief requested. A motion to amend is not entered automatically, but only upon patent owner having demonstrated, by a preponderance of the evidence, the patentability of the proposed claims. Proposed substitute claims may not enlarge the scope of the original patent claims. The Board authorized-in-part patent owner’s motion to amend, finding that patent owner demonstrated (i) written description support for the proposed claims, (ii) the proposed claims did not enlarge the scope of the original patent claims, and (iii) all but one of the proposed claims are patentable over the prior art.

BAE Sys. Info. and Elec. Sys. Integration, Inc. v. Cheetah Omni, LLC, IPR2013-00175, Paper 45 (PTAB June 19, 2014) The Board determined that patent owner did not demonstrate written description support for the features of its proposed substitute claims.  37 C.F.R. § 42.212(b)(1) requires a motion to amend to set forth the support in the original disclosure of the patent for each claim that is added.  For written description support for the proposed substitute claims, patent owner referred to portions of the challenged patent and only for the added limitations in its proposed substitute claims.  Such reference does not satisfy the requirements of Rule 42.121(b)(1) because the specification of the patent is not the original disclosure. Moreover, patent owner cites alleged support in the specification for only the added limitations. Patent owner does not identify support in the original disclosure “for each claim” in its motion to amend, as a whole and including the proposed new limitations, as required by Rule 42.121(b)(1). Patent owner therefore has not shown that its proposed substitute claims, as a whole, have written description support in the original disclosure of the patent.

Ariosa Diagnostics v. Isis Innovation Ltd., IPR2012-00022, Paper 166 (PTAB Sept. 2, 2014). A petitioner cannot challenge the patentability of claims under 35 U.S.C. § 101 in an IPR proceeding. In a motion to amend, however, patent owner has the burden of demonstrating the patentability of the claims.  Where a district court has determined that the claims are invalid under 35 U.S.C. § 101, the Board will consider whether patent owner has explained how the proposed amendments addressed the district court’s concerns regarding the validity of the claims and whether patent owner has shown that its proposed amended claim encompasses patent eligible subject matter.  In such a circumstance, patent owner must demonstrate more than patentability of the proposed substitute claims over the prior art.

Corning Optical Communications RF, LLC v. PPC Broadband, Inc., IPR2014-00441, Paper 19 (PTAB Oct. 30, 2014) (representative). Order provides guidance on the specific requirements for filing a motion to amend. The Board authorized patent owner to file proposed substitute claims in an appendix to a motion to amend such that the proposed claims do not count toward the page limit for the motion. A request to cancel claims will not be regarded as contingent. However, a request to substitute claims is always contingent upon a finding that the original patent claims are determined to be unpatentable or cancelled by patent owner. A proposed substitute claim should be responsive to the ground of unpatentability applicable to the original patent claim for which it is a substitute. Patent owner must clearly show, for each proposed substitute claim, the changes to the original claim which it is intended to replace. Patent owner must also provide a proposed claim construction for any new term used in a proposed substitute claim if the meaning of the new term can be anticipated as subject to dispute.

Facebook, Inc. v. EveryMD LLC, IPR2014-00242, Paper 31 (PTAB May 12, 2015) In opposing a motion to amend, petitioner may rely on prior art not already of record in the IPR proceeding.  The Board determined that patent owner’s proposed substitute claims were not patentable over new prior art cited by petitioner.  Patent owner’s mere citation in a table to various portions of the original disclosure, without any explanation why a person of ordinary skill in the art would have recognized that the inventor possessed the claimed subject matter as a whole, is inadequate to satisfy the written description requirement.

Masterimage 3D, Inc. v. RealD Inc., IPR2015-00040, Paper 42 (PTAB July 15, 2015) (precedential) The Board clarified the meaning of (1) “the prior art of record” and (2) “prior art known to the patent owner” as used in Idle Free.  The Board indicated that (1) “the prior art of record” includes a) any material art in the prosecution history of the patent, b) any material art of record in the current proceeding, including art asserted in grounds not instituted by the Board, and c) any material art of record in any other proceeding before the PTO involving the patent.  In addition, the Board indicated that (2) “prior art known to the patent owner” includes “no more than the material prior art that Patent Owner makes of record in the current proceeding pursuant to its duty of candor and good faith to the Office under 37 C.F.R. § 42.11, in light of a Motion to Amend.”  In a motion to amend, patent owner has the burden of demonstrating that proposed substitute claims are patentable over the prior art of record.   Once patent owner has set forth a prima facie case of patentability of its proposed substitute claims over the prior art of record, the burden of production shifts to petitioner.

Geox S.p.A. v. Outdry Technologies Corp., IPR2014-01244, Paper 27 (PTAB Dec. 18, 2015).  The Board denied patent owner’s motion to amend because patent owner did not identify written description support for the proposed substitute claims.  Patent owner identified written description support with respect to the patent and a machine translation of the priority document.  The Board faulted patent owner for not identifying written description support with respect to the original specification of the application that resulted in the patent.   In addition, the Board determined that the portions of the specification cited by the patent owner did not provide written description support for the features of the proposed substitute claims.

Global Tel*Link Corp. v. Securus Techs., Inc., IPR2014-01278, Paper 34 (PTAB Jan. 21, 2016).  The Board denied patent owner’s motion to amend that sought to correct a typographical error in the dependencies of several claims. Patent owner conceded that the requested amendments were not responsive to a ground of unpatentability involved in the trial. The Board therefore denied the motion to under 37 C.F.R. § 42.11, which requires, in part, that the amendment responds to a ground of unpatentability involved in the trial.

Toshiba Corp. v. Optical Devices, LLC, IPR2014-01441, Paper 36 (PTAB Mar. 8, 2016). The Board denied patent owner’s motion to amend because patent did not demonstrate that there is adequate written description support for the substitute claims in the challenged reissue application or the application from which it claims priority. The Board indicated that patent owner’s proposed claims were broader in scope than the disclosure of the priority application because the proposed claims recited a “change,” but the priority application only supported an “increase.” The Board reasoned that a “change” is broad enough to encompass both an “increase” and a “decrease,” but the priority application disclosed only an “increase.” To adequately support the claims, the written description must clearly allow persons of ordinary skill in the art to recognize that the inventor invented what is claimed.

Amazon.com, Inc. v. Personalized Media Communications, LLC, IPR2014-01534, Paper 55 (PTAB Mar. 22, 2016). The Board denied patent owner’s motion to amend because patent owner did not demonstrate that the claims recite patent eligible subject matter under 35 U.S.C. § 101. An inter partes review cannot be instituted using 35 U.S.C. § 101 as the basis for a challenge brought by a petitioner.  In a motion to amend, however, patent owner has the burden of demonstrating the patentability of the claims. Where a district court has determined that the claims are invalid under 35 U.S.C. § 101, the Board will consider whether patent owner has explained how the proposed amendments addressed the district court’s concerns regarding the validity of the claims and whether patent owner has shown that its proposed amended claim encompasses patent eligible subject matter.

Product Miniature, Inc. v. PO Displays USA, LLC, IPR2015-00266, Paper 43 (PTAB Apr. 13, 2016) The Board denied patent owner’s motion to amend because patent owner did not sufficiently explain why the substitute claims are patentable over the prior art.  While not required to prove that the claims are patentable over every item of prior art known to a person of ordinary skill, the patent owner is required to explain why the claims are patentable over the prior art of record. The Board noted that patent owner argued that the additional claim limitations are distinguishable over several references. This, however, fails to satisfy patent owner’s burden of showing a patentable distinction of each proposed substitute claim over the prior art of record. Patent owner did not explain adequately why the additional limitations would have been unobvious to one of ordinary skill in the art. Patent owner does not explain why the additional limitations are more “than the predictable use of prior art elements according to their established functions.”

Shinn Fu Co. of Am., Inc. v. The Tire Hanger Corp., IPR2015-00208, Paper 24 (PTAB Apr. 22, 2016) The Board granted patent owner’s motion to amend, determining that the proposed substitute claims are patentable over the prior art of record, are supported by the original description, and do not enlarge the scope of the challenged claims of the patent which were determined to be unpatentable.

Sony Corp. v. Memory Integrity, LLC, IPR2015-00158, Paper 35 (PTAB May 19, 2016) The Board denied patent owner’s motion to amend on the basis that the proposed substitute claims did not comply with the enablement requirement of 35 U.S.C. § 112 ¶ 1.  The Board indicated that patent owner’s motion lacked reference to any detailed discussion in the challenged patent of the how the proposed new features would operate, let alone such full, clear, concise, and exact terms as to enable any person skilled in the art, to make and use the system. Although the knowledge of one skilled in the art is relevant, the novel aspect of an invention must be enabled in the patent. The Board also indicated that patent owner could not demonstrate that an asserted reference was not prior art against the proposed new claims, because failing to comply with the enablement requirement precluded an earlier effective filing date prior to the critical date of the asserted reference. Consequently, patent owner’s failure to demonstrate enablement of the proposed substitute claims results in a failure to demonstrate novelty and non-obviousness of the proposed substitute claims.

Google Inc. and Apple Inc. v. ContentGuard Holdings, Inc., CBM2015-00040, Paper 34 (PTAB June 21, 2016) The Board granted patent owner’s motion to amend after determining that the challenged claims are unpatentable.  The Board determined that, in compliance with 37 C.F.R. § 42.221, the proposed amendments were responsive to a ground of unpatentability involved in the trial, the proposed amendments did not enlarge the scope of the claims, patent owner demonstrated written support in the earlier-filed disclosure for the proposed substitute claim as a whole, patent owner provided a construction of the new claim terms, patent owner addressed the basic knowledge and skill set possessed by a person of ordinary skill in the art, and patent owner demonstrated the patentability of the claims over prior art known to patent owner.  The Board also granted patent owner’s request and provided an advisory opinion stating that the amended claims are substantially identical to the challenged claims within the meaning of 35 U.S.C. § 252, for purposes of whether intervening rights would be generated.

 

Motion to Exclude

A motion to exclude evidence must be filed to preserve any objection. The motion must identify the objections in the record in order and must explain the objections. A motion to exclude may be filed without prior authorization from the Board. 37 C.F.R. § 42.64(c). 37 C.F.R. § 42.64(b) governs the timing requirements for filing objections to evidence.

Liberty Mutual Ins. Co. v. Progressive Casualty Ins. Co., CBM2012-00002, Paper 66 (PTAB Jan. 23, 2014). A motion to exclude must explain why the evidence is not admissible (e.g., relevance or hearsay), but may not be used to challenge the sufficiency of the evidence to prove a particular fact. Office Patent Trial Practice Guide, 77 Fed. Reg. 48765, 48767 (Aug. 14, 2012). A motion to exclude evidence also must: (a) identify where in the record the objection originally was made; (b) identify where in the record the evidence sought to be excluded was relied upon by an opponent; (c) address objections to exhibits in numerical order; and (d) explain each objection. A motion to exclude is not the proper mechanism to (i) challenge the sufficiency or persuasiveness of the evidence produced by the opposing party, (ii) serve as a sur-reply, or (iii) argue that a reply contains new arguments or relies on new evidence necessary to make out a prima facie case. There is a strong public policy for making all information filed in a non-jury, quasi-judicial administrative proceeding available to the public, especially in an inter partes review which determines the patentability of claim in an issued patent. It is within the Board’s discretion to assign the appropriate weight to be accorded to evidence.

ABB Inc. v. Roy-G-Biv Corp., IPR2013-000062, Paper 84 (Apr. 11, 2014) A motion to exclude evidence is not the proper vehicle for resolution of a dispute regarding reply arguments and evidence exceeding the proper scope of a reply. A motion to exclude “must identify the objections in the record.”  37 C.F.R. §42.64(c).  Patent owner’s motion does not identify where in the record an objection originally was made.  If an issue arises regarding whether a reply argument or evidence in support of a reply exceeds the scope of a proper reply, the parties should contact the Board to discuss the issue.

Republic Tobacco, LP v. Fan Bao, IPR2015-00072, Paper 26 (PTAB, Jan. 4, 2016) The Board refused to exclude allegedly improper evidence because patent owner did not timely move to exclude the evidence according to the rules of 37 C.F.R. § 42.64(c).  A week after petitioner’s reply, patent owner filed a paper entitled “Patent Owner’s Objection to Untimely and Improper Evidence,” asserting that exhibits submitted with the reply constituted new evidence.  The Board addressed whether to classify this filing as a sur-reply, a motion to strike, or a motion to exclude.  The Board determined that the paper could not be a sur-reply or a motion to strike because patent owner did not seek authorization prior to filing the paper.  The Board indicated that no prior authorization was required if patent owner filed the paper to object to the evidence under 37 C.F.R. § 42.64(b)(1).  However, the Board noted that patent owner did not file a motion to exclude, separate from its paper.  Therefore, even if patent owner had intended its paper to serve as objections to the evidence, patent owner did not preserve its objection by timely filing a motion to exclude.  The Board therefore refused to consider the merits of patent owner’s paper.

Zero Gravity Inside, Inc. v. Footbalance System Oy, IPR2015-01769, Paper 17 (PTAB Feb. 12, 2016) Prior to institution, the Board expunged petitioner’s unauthorized unopposed motion to terminate.  When expunging the unauthorized motion, the Board granted the parties authorization to file a joint motion to terminate, but the parties did not file such a joint motion. Patent owner requested that petitioner be bound to statements made in the expunged unopposed motion, including that petitioner would “not offer any additional papers or arguments challenging” the patent.  In the institution decision, the Board indicated that petitioner was not bound to representations made at the time the parties were attempting to come to an agreement to terminate the proceeding, because the parties ultimately failed to reach any agreement.

Oxford Nanopore Techs. Ltd. v. Univ. of Washington, IPR2014-00513, Paper 51 (PTAB Feb. 26, 2016) The Board denied patent owner’s motion to exclude the deposition testimony of petitioner’s expert, which was cited in petitioner’s reply.  Patent owner argued that the evidence was prejudicial and irrelevant.  As to prejudice, the Board stated that the danger of prejudice in an IPR proceeding is considerably lower than before a jury in a district court proceeding, because the Board has significant experience in evaluating expert testimony. As to relevance, the Board noted that patent owner contends that the disputed testimony is irrelevant because it is improper hindsight evidence, and is evidence of the inventor’s viewpoint, rather than that of an ordinary artisan.  The issue of whether the disputed evidence should be viewed as improper hindsight or as the perspective of an inventor, rather than an ordinary artisan, goes to the testimony’s weight, rather than its admissibility.

B/E Aerospace, Inc. v. MAG Aerospace Industries, LLC, IPR2014-01510, Paper 106 (PTAB Mar. 18, 2016).  The Board denied patent owner’s motion to exclude a declarant as unqualified. Patent owner argued that the qualifications of petitioner’s declarant, including that he lacks hands-on experience with the subject matter of the challenged claims and that his patents do not relate to the subject matter of the challenged claims, indicate that the declarant is not an expert in the art. The Board was not persuaded, even assuming patent owner’s assertions were true, that the declarant’s testimony should be excluded. To testify as an expert under FRE 702, a person need not be a person of ordinary skill in the art, but rather may be “qualified in the pertinent art.”

Hopkins Mfg. Corp. v. Cequent Performance Prods., Inc., IPR2015-00609, Paper 23 (PTAB Mar. 23, 2016). The Board denied authorization for petitioner to file a motion to exclude patent owner’s objections to evidence. Petitioner argued that patent owner’s objections are “more than simple objections to the admissibility of evidence” and “constitute[] an additional brief on the merits of the proceeding in which Patent Owner introduces substantive argument and cites to additional evidence.” The Board indicated that, to the extent that patent owner’s objections introduce substantive argument and cite to additional evidence, as alleged by petitioner, the Board will consider any improper arguments and evidence.

Blackberry Corp. v. Zipit Wireless, Inc., IPR2014-01507, Paper 50 (PTAB Mar. 29, 2016). The Board expunged secondary considerations evidence filed by patent owner with a sur-reply in response to petitioner’s reply. Patent owner argued that the secondary considerations evidence was a summary of evidence introduced with the patent owner response. The Board expunged the evidence as untimely and cumulative of evidence already of record. The Board also grated petitioner’s motion to exclude a Ph.D. dissertation and a Master’s thesis submitted by patent owner to illustrate its declarant’s academic qualifications, because patent owner did not file an English translation with accompanying affidavit as required by 37 C.F.R. § 42.63(b).

Actifio, Inc. v. Delphix Corp., IPR2015-00050, Paper 57 (PTAB Mar. 31, 2016). The Board denied patent owner’s motion to exclude the supplemental declaration of petitioner’s expert as inadmissible hearsay. The Board indicated that the supplemental declaration consists of statements made by the declarant in the IPR proceeding, and therefore the statements are not “hearsay” under FRE 801(c). Rather, they are sworn testimony that is subject to cross-examination. The Board noted that patent owner cross-examined the declarant with respect to that testimony.

Chervon N. Am, Inc. v. Milwaukee Elec. Tool. Corp., IPR2015-00595, Paper 64 (PTAB Apr. 7, 2016). The Board denied authorization for petitioner to file a motion to strike patent owner’s motion to exclude because it introduced substantive arguments regarding the sufficiency of petitioner’s evidence. To the extent that patent owner’s papers contain improper argument, the panel will be able to identify such argument and treat it accordingly. The Board granted petitioner authorization to file an opposition to patent owner’s motion to exclude in order to address any arguments in patent owner’s motion to exclude it deems necessary, including any perceived substantive arguments.

Hughes Network Sys., LLC v. Calif. Inst. Of Tech., IPR2015-00059, Paper 42 (PTAB Apr. 21, 2016) The Board denied patent owner’s motion to strike as untimely, the declaration of petitioner’s in-house counsel. Patent owner does not allege that the declaration raises any new issue. Patent owner’s only complaint appears to be that it cannot respond to petitioner’s reply “with its own argument or evidence.” This is specious. First, patent owner did not even attempt to cross-examine or submit observations on that cross-examination, as permitted by the Scheduling Order and Trial Practice Guide. If such argument or evidence were likely to be fruitful, patent owner could have sought leave for a sur-reply, which it did not. Patent owner has failed to carry its burden on its motion to strike. The record shows that petitioner submitted the declaration along with its reply to respond directly to patent owner’s argument that not all RPIs were initially named by petitioner.

Enovate Medical, LLC v. InterMetro Indus. Corp., IPR2015-00300, Paper 54 (PTAB May 11, 2016). The Board sua sponte expunged a license agreement between patent owner and another entity submitted with the patent owner’s opposition to petitioner’s motion to exclude. The agreement was filed without the Board’s authorization because it was filed with patent owner’s opposition to petitioner’s motion to exclude and is not responsive to the motion to exclude. In fact, patent owner’s opposition requests that the Board enter into the record the new exhibit which was finalized subsequent to patent owner’s response. A request for relief should not be made in an opposition brief. It should be made in a motion. A motion (and, thus, a request for relief) may be filed only if authorization has been obtained.

Accord Healthcare Inc. v. Daiichi Sankyo Co., Ltd., IPR2015-00864, Paper 104 (PTAB Sept. 12, 2016). The Board denied patent owner’s motion to exclude petitioner’s exhibits and supporting declarations and deposition testimony concerning the public accessibility of the exhibits. The Board agreed with petitioner that patent owner improperly raised the issue regarding whether the challenged exhibits are prior art printed publications in a motion to exclude. Such arguments should have been presented in patent owner’s response, not a motion to exclude, because the arguments go to the weight and sufficiency of the evidence, not admissibility.

New Evidence or Arguments

After institution of trial, a patent owner may file a response to the petition and institution decision. The petitioner may then file a reply. In some circumstances, the Board may permit the petitioner to file a reply to the patent owner’s preliminary response to the petition, prior to the Board issuing a decision on institution. 37 C.F.R. 42.23(b) provides that a reply may only respond to arguments raised in the corresponding opposition, patent owner preliminary response, or patent owner response.

Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064 (Fed. Circ. 2015) The Federal Circuit held that new evidence submitted with an expert declaration filed with petitioner’s reply did not violate patent owner’s procedural rights because the expert declaration was responsive to patent owner’s arguments, and patent owner had an opportunity to respond to the evidence.  The evidence submitted with the expert declaration was directed to the ordinary level of skill in the art, and the Board made it clear that it did not rely on the background references for the prima facie case of obviousness.  The evidence was not improper under 37 C.F.R. 42.23(b) because the evidence was responsive to patent owner’s arguments in the patent owner response.  Since patent owner did not seek to file a surreply, to file additional observations on cross-examination of the declarant, to make arguments in those observations, or to have the Board waive any other regulations that patentee believed prevented it from adequately responding to expert’s declaration, patent owner did not exhaust its procedural rights.  Therefore, patent owner had a meaningful opportunity to respond to the evidence.

Dell Inc. v. Acceleron, LLC, 818 F. 3d 1293 (Fed. Cir. 2016) The Board is not permitted to rely on arguments and “key factual determinations” raised for the first time at oral hearing.  Patent owner is entitled to notice of and a fair opportunity to respond to grounds of challenge.  The Board denied patent owner its procedural rights by relying in its final written decision on a factual assertion introduced into the proceeding only at oral argument, when patent owner could not meaningfully respond.

Genzyme Therapeutic Prods. Ltd. P’ship v. Biomarin Pharmaceutical Inc., 825 F.3d 1360 (Fed. Cir. 2016) The Board did not violate the Administrative Procedure Act when it relied upon prior art references to establish the state of the art at the time of the claimed invention, when those references were not relied upon for institution or cited in the petition.  “There is no requirement, either in the Board’s regulations, or the APA, or as a matter of due process, for the institution decision to anticipate and set forth every legal or factual issue that might arise in the course of the trial.”  Petitioner newly cited the background references in its petitioner reply in response to patent owner’s argument.  The Federal Circuit held that patent owner had notice of those of references and therefore had an opportunity to be heard with regard to those references. The Federal Circuit noted that patent owner could have pursued a motion to file a sur-reply to address the background references, or filed a motion to exclude those references.  These procedural remedies, which patent owner did not pursue, provided patent an opportunity to be heard about the background references.

Cyanotech Corp. v. The Board of Trustees of the Univ. of Illinois, IPR2013-00401, Paper 44 (PTAB June 6, 2014) The Board declined authorization for patent owner to file a motion to exclude or any other type of challenge to petitioner’s reply for allegedly presenting new arguments or evidence that were not presented in the petition.  The Board indicated that the question of whether petitioner’s reply exceeded the proper scope of reply under 37 C.F.R. § 42.23 will be addressed by the Board when preparing the final written decision.  The Board cautioned petitioner that a reply that raises new issues or belatedly introduces new evidence will not be considered.  The Board will not distinguish proper portions of the reply from improper portions.

BAE Sys. Info. and Elec. Sys. Integration, Inc. v. Cheetah Omni, LLC, IPR2013-00175, Paper 45 (PTAB June 19, 2014) In its reply, petitioner argued that Fig. 20 of the principal reference disclosed all the features of several claims.  While noting that petitioner cited to Fig. 20 in its petition, the Board indicated that petitioner did not make that argument in its petition.  The Board therefore declined to consider petitioner’s argument based on Fig. 20 in the final written decision.  Under 37 C.F.R. § 42.23(b), a reply may only respond to arguments raised in the corresponding opposition or patent owner response.

Iron Dome LLC v. E-Watch, Inc., IPR2014-00439, Paper 13 (July 16, 2014) Petitioner filed a reply to patent owner’s preliminary response, without prior authorization from the Board.  The Board indicated that the rules “do not contemplate or authorize the filing of a reply to a preliminary response.  If a party desires to file such a reply, it would have to seek prior authorization from the Board.”  Since petitioner did not seek prior authorization from the Board before filing the reply to patent owner’s preliminary response, the reply was expunged.

Volkswagen Group of America, Inc. v. Emerachem Holdings, LLC, IPR2014-01555, Paper 36 (PTAB Oct. 9, 2015) The Board authorized the parties to present additional briefing on whether petitioner prevented new evidence in its reply.  The Board remarked that new issues raised in a reply have been, and continue to be, a problem in IPR cases. Belated presentation of reply evidence can be prejudicial to a patent owner. On the other hand, patent owners have too often cried foul when evidence is properly relied upon in a reply. In a reply, a petitioner legitimately may respond to arguments made in an opposition. To do so, often it is necessary to rely on (1) evidence already cited in a petition or (2) new evidence. A motion to supplement is not necessary if evidence relied upon in a reply is limited to responding to arguments made in an opposition. Furthermore, in a petition, a petitioner does not have to anticipate all possible arguments which a patent owner made present in an opposition on the merits.

Nintendo of Am., Inc. v. iLife Tech, IPR2015-00105, Paper 23 (PTAB Nov. 10, 2015) The Board authorized patent owner to file a paper identifying those portions of petitioner’s reply that are believed to contain new evidence and/or argument.  The Board required that the paper, which was limited to two pages, be in the form of a list providing the location and a concise description of any portion of petitioner’s reply that patent owner wishes to draw to the Board’s attention. The Board also authorized petitioner to file a paper, limited to two pages, identifying what petitioner regards as the material contained in the patent owner response which triggered or caused petitioner to include in its reply each item listed by patent owner and/or where each item listed by patent owner appears in the petition.  The Board cautioned that patent owner and petitioner’s papers could not contain argument.

Samsung Elecs. Co. Ltd. v. Affinity Labs of Texas, LLC, IPR2014-01181, Paper 36 (PTAB Jan. 28, 2016) Patent owner argued that petitioner provided new arguments and evidence in its reply with respect to the construction of a claim term, and used additional citations to exhibits filed with the petition to support its arguments in the reply.  The Board determined that the allegedly new arguments and evidence were not improper.  Petitioner cannot anticipate or seek to refute every possible argument that will be made by patent owner in its petition.  Petitioner is entitled to provide argument and evidence in its reply to refute arguments and evidence in patent owner’s response.  Moreover, patent owner had sufficient opportunity through cross-examination and motions for observations on cross-examination to address the evidence submitted by petitioner in its reply.

Google Inc. v. Visual Real Estate, Inc., IPR2014-01340, Paper 38 (PTAB Feb. 25, 2016) The Board denied patent owner’s motion to exclude the declaration of petitioner’s rebuttal witness submitted with the petitioner reply.  Patent owner argued that the rebuttal testimony exceeded the scope of the reply and was irrelevant.  A motion to exclude is not a proper vehicle for a party to raise the issue of testimony in a rebuttal declaration exceeding the permissible scope of reply testimony.  The Board also determined that the objected-to testimony was responsive to patent owner’s arguments.

Geosys-Intl, Inc. v. Farmer’s Edge Precision Consulting, Inc., IPR2015-00708, Paper 19 (PTAB Feb. 26, 2016) The Board denied authorization for patent owner to file a sur-reply to address allegedly new material presented in petitioner’s reply that was, according to patent owner, not present in the petition and not responsive to arguments made in the patent owner response.  The Board authorized patent owner to file a paper identifying the specific portions of petitioner’s reply which patent owner believes to be non-responsive content.  The Board indicated that patent owner’s paper may not include any substantive arguments.

SNF Holding Co. v. BASF Corp., IPR2015-00600, Paper 30 (PTAB Feb. 29, 2016) The Board denied authorization for patent owner to file a motion to strike a portion of petitioner’s reply that was alleged to contain argument and evidence that exceeded the scope of patent owner’s response. The Board authorized patent owner to file a two-page paper, limited to identifying by page and line number, each alleged instance of improper argument or evidence in the reply, including a one-sentence explanation of each instance. The Board authorized petitioner to file a two-page response. The Board will then determine whether petitioner’s reply and related evidence are outside the scope of a proper reply under 37 C.F.R. § 42.23(b), when preparing a final written decision. With respect to patent owner’s assertion that the reply takes expert testimony out of context or misrepresents opinions of patent owner’s experts, patent owner can address those concerns at oral argument.

Silicon Labs., Inc. v. Cresta Tech. Corp., IPR2015-00615, Paper 26 (PTAB Feb. 29, 2016) The Board denied authorization for patent owner to file a motion to strike portions of the petitioner’s reply and reply declaration as beyond the scope of patent owner’s response and using improper incorporation. The Board explained the differences between permitting patent owner to file a paper identifying those portions of the reply and reply declaration which are believed to be new evidence or argument (list approach), and a motion to strike. The Board explained that the primary distinction between a motion to strike approach and the list approach is that with the motion there is a potential to strike some portions of the record, while in the list approach even portions that are not considered remain in the record. The Board stated its preference for the list approach so that the record is complete. Then, should the Board incorrectly determine that portions of petitioner’s reply are beyond the scope of patent owner’s response, those portions remain in the record for consideration on appeal.

Camelback Prods., LLC v. Ignite USA, LLC, IPR2015-01034, Paper 24 (PTAB Mar. 10, 2016) The Board denied authorization for patent owner to file a sur-reply to petitioner’s reply to address allegedly new arguments and evidence in petitioner’s reply.  Whether a reply contains arguments or evidence that is outside the scope of a proper reply under 37 C.F.R. § 42.23(b) is left to the determination of the Board.  The Board will determine whether petitioner’s reply and evidence are outside the scope of a proper reply when the Board reviews all of the parties’ briefs and prepares the final written decision.  If there are improper arguments or evidence presented in the reply, the Board may exclude the reply and related evidence.  The Board indicated that patent owner is permitted to cross-examine replay declarants and, if necessary, file a motion for observation regarding cross-examination of a reply witness.

Kingston Tech. Co., Inc. v. Imation Corp., IPR2015-00066, Paper 19 (PTAB Mar. 24, 2016) The Board refused to consider the merit of petitioner’s arguments at oral hearing that a first of two embodiments of an asserted reference anticipated the claims, when the petition and the supporting expert declaration relied solely on the second embodiment to allege that the claims are anticipated.  Petitioner’s new arguments suffer from several deficiencies.  First, they do not comply with the requirements of 35 U.S.C. § 312(a)(3) and 37 C.F.R. §§ 42.104(b)(4) and 42.104(b)(5) to specify with particularity where each element of the claim is disclosed in the prior art.  Second, the institution decision, which was responsive to the petition, did not provide patent owner with notice of grounds of challenge based on the first embodiment, depriving patent owner of reasonable notice and opportunity to respond.  Third, the oral hearing is not an opportunity to make new arguments.  Fourth, even if the Board was to consider petitioner’s arguments at oral hearing, they are merely attorney argument, devoid of evidentiary support, and are entitled to no weight.

Blackberry Corp. v. Zipit Wireless, Inc., IPR2014-01508, Paper 49 (PTAB Mar. 29, 2016) The Board denied patent owner’s motion to exclude portions of petitioner’s reply as untimely. Patent owner argued that petitioner’s reply contains “new unsupported attorney arguments” regarding the teachings of an asserted reference in relation to several claim features, and that patent owner is prejudiced by the inability to cross-examine petitioner’s expert regarding these arguments. The Board indicated that a motion to exclude is not a proper vehicle for a party to raise the issue of arguments exceeding the permissible scope of a reply. Whether a reply contains arguments or evidence that are outside of a proper reply under 37 C.F.R. § 42.23(b) is left to the Board’s determination.

Apple, Inc. v. Ameranth Inc., CBM2015-00080, Paper 27 (PTAB Apr. 1, 2016). The Board denied authorization for patent owner to file a motion to strike portions of petitioner’s reply and several accompanying exhibits. Patent owner alleged that arguments in petitioner’s reply and accompanying exhibits are outside the proper scope of a reply. Petitioner disputed this contention. The Board denied patent owner’s request for authorization to file motions to strike. The Board will determine for itself whether arguments in the reply and the exhibits are outside the appropriate scope and, if so, not consider those arguments and exhibits.

Masterimage 3D, Inc. v. RealD Inc., IPR2015-00040, Paper 85 (PTAB Apr. 14, 2016). The Board denied patent owner’s motion to exclude a declaration supporting petitioner’s reply for allegedly including new arguments and evidence. “Evidently, Patent Owner believes that material concerning obviousness of the claimed invention over the applied references must be submitted only in the Petition, and never in the Reply. That simply is incorrect. Petitioner is entitled to respond to arguments and evidence presented by Patent Owner in the Patent Owner Response. Petitioner generally gets the last word because it is the party charged with the burden of proof with respect to its claim challenges.”

WhatsApp Inc. v. Triplay, Inc., IPR2015-00740, Paper 42 (PTAB Apr. 19, 2016). The Board denied authorization for patent owner to file a sur-reply to adress patent owner’s contentions that arguments in petitioner’s reply and reply declaration exceed the scope of the arguments in the patent owner response. “Generally, the Board will determine for itself whether arguments in the replies and the exhibits are outside the appropriate scope under 37 C.F.R. § 42.23(b) and, if so, not consider those arguments and exhibits.” The Board authorized patent owner to file a two-page submission that identifies, in the form of a sequentially numbered, itemized list, arguments and evidence in the reply and accompanying exhibits that patent owner contends exceeds the proper scope of a reply. No explanation, elaboration, or discussion should be included in the submission.

Altaire Pharmaceuticals, Inc. v. Paragon Bioteck, Inc., PGR2015-00011, Paper 38 (PTAB May 18, 2016) The Board authorized patent owner to file an identification of improper new reply materials. Patent owner objected to, under 37 C.F.R. § 42.64(b)(1), the evidence at issue as untimely and/or exceeding the proper scope of a reply. A motion to exclude, together with the corresponding objection, is not an appropriate vehicle for challenging a reply or supporting evidence as being of improper scope. An objection and motion to exclude under § 42.64 are reserved for challenging the admissibility of evidence under the Federal Rules of Evidence. The Board authorized patent owner to file a two-page document, identifying with particularity each argument or evidence in the reply that patent owner alleges as inappropriate new argument or evidence. The Board also authorized petitioner to file a two-page response, identifying with particularity (1) the arguments in the patent owner’s response that each challenged argument or evidence is responsive to; and/or (2) the arguments in the petition that provide a sufficient basis to justify characterizing each challenged argument or evidence as not improperly new.

10X Genomics, Inc. v. The Univ. of Chicago, IPR2015-01157, Paper 30 (PTAB May 26, 2016). The Board denied authorization for patent owner’s motion to strike the direct testimony of petitioner’s expert as being outside the scope of the reply, and the expert’s cross-examination testimony during his second deposition as nonresponsive. Any non-responsiveness of a witness to questioning during cross-examination would go to the weight given to that witness’s direct testimony. A motion to strike the testimony altogether was not warranted. Rather, patent owner could call the Board’s attention to the alleged non-responsiveness of petitioner’s expert by filing observations on cross-examination. The Board authorized patent owner to file a short numbered list of portions of the expert’s testimony that are allegedly beyond the scope of a proper reply. The Board will determine whether the Declaration contains improper testimony when it reviews the record as a whole, and may disregard any testimony that goes beyond the permitted scope of a reply.

Observations on Cross Examination Testimony

The Board allows parties to file, without prior approval, motions for observations on cross examination testimony to bring pertinent testimony to the attention of the Board when the testimony is presented after the party is not entitled to submit substantive briefing.

Idle Free Systems, Inc. v. Bergstrom, Inc., IPR2012-00027, Paper 46 (PTAB Sept. 10, 2013). The Board provided guidance on motions for observations on cross-examination testimony.  The Board explained that observations on cross-examination provide a mechanism to draw the Board’s attention to relevant cross-examination testimony of a reply witness.  Each observation must be a concise statement of the relevance of precisely identified testimony to a precisely identified argument or portion of an exhibit.  An observation is not an opportunity to raise new issues, re-argue issues, or pursue objections.  The Board identified a form in which to present the observations, and specified that each observation should not exceed one short paragraphs.  The Board may decline consideration or entry of argumentative observations.  The Board also required that the pertinent cross-examination testimony be reproduced in the observation directed to that testimony, rather than referencing the testimony by page and line number.

Corning Inc. v. DSM IP Assets B.V., IPR2013-00048, Paper 94 (PTAB May 9, 2014). The Board may consider observations or the lack of observations in assessing the weight of witness testimony.  In its reply, petitioner submitted the testimony of an expert to rebut the testimony of patent owner’s expert witness.  The Board found the explanation of petitioner’s expert to be more persuasive because, although patent owner cross-examined petitioner’s expert extensively after his declaration was submitted with petitioner’s reply, patent owner did not call the Board’s attention to any of his testimony in patent owner’s motion for observations of petitioner’s reply declarants.

Actelion Pharmaceuticals Ltd v. Icos Corp., IPR2015-00561, Paper 33 (PTAB Mar. 18, 2016). The Board authorized patent owner to file a modified observation regarding cross-examination testimony, in response to petitioner’s objection that patent owner’s previous observation contained arguments. The Board agreed with petitioner, and explained that observations on cross examination are for the purpose of drawing the Board’s attention to relevant testimony; they are not an opportunity for additional briefing. Observations must be a concise statement of the relevance of precisely identified testimony to a precisely identified argument or portion of an exhibit. Characterizations of evidence are not permitted, and the Board may refuse to consider argumentative observations.

J Squared, Inc. d/b/a Univ. Loft Co. v. Sauder Mfg. Co., IPR2015-00774, Paper 29 (PTAB Mar. 29, 2016). The Board expunged patent owner’s unauthorized motions for observations of its own witnesses. Although the Trial Practice Guide provides that authorization is automatically granted for motions for observations on cross-examination, such authorization is only for motions filed by the party taking the cross-examination. A proponent of direct testimony must seek prior authorization from the Board prior to filing a motion for observations on cross-examination of its own direct witness. The Board expunged the motions for observations since patent owner did not seek prior authorization for its motions, as is required.

Deere & Co. v. Richard Gramm, IPR2015-00898, Paper 27 (PTAB Apr. 6, 2016). The Board granted patent owner authorization to file a motion for observation regarding cross-examination testimony of its own witness. The witness is patent owner, the sole named inventor, and one of the real parties-in-interest. Patent owner’s request is more limited than what is contemplated typically by an observation as described in the Trial Practice Guide. Patent owner essentially requests the opportunity to designate responsive deposition testimony, nothing more. The Board determined that patent owner’s request is tailored narrowly, may be helpful to the Board’s review of the records in the proceeding, is not overly burdensome on petitioner, and does not give patent owner an unfair advantage or sur-reply because of the limited nature of the requested relief.

Epicor Software Corp. v. Protegrity Corp., CBM2015-00030, Paper 39 (PTAB June 2, 2016). The Board expunged patent owner’s motion for observation. The Board indicated that the cross- examination of petitioner’s expert occurred before patent owner filed its last substantive paper, making patent owner’s motion for observation improper. The Board also expunged petitioner’s opposition to patent owner’s observation as being unnecessary.

Masterimage 3D, Inc. v. RealD Inc., IPR2015-00400, Paper 91 (PTAB Sept. 1, 2016).   The Board rejected patent owner’s argument that the final written decision did not indicate that the Board considered patent owner’s motion for observations on cross-examination, or the testimonial evidence adduced in that cross-examination. No specific discussion with respect to any item contained in the observations or any other cross- examination testimony was necessary. A motion for observation on cross-examination is an opportunity to call certain cross-examination testimony to the Board’s attention. It is not an opportunity to raise new issues or re-argue issues. It also is not in the nature of a general sur-reply.

Obviousness

Below are PTAB cases and Federal Circuit appeals addressing obviousness arguments of the parties.

Arendi S.A.R.L. v. Apple Inc., Appeal No. 2015-2073 (Fed. Cir. Aug. 9, 2016). The Federal Circuit reversed the Board’s determination that the challenged claims are obvious, because the Board misapplied the law on the permissible use of common sense in an obviousness analysis.  The Board determined that the claims were obvious over a single reference, holding that although the reference did not disclose a particular limitation, it would have been reasonable to presume, as a matter of common sense, that the reference would have performed the limitation.  The Federal Circuit rejected the Board’s analysis, holding that common sense must be confined to its “proper place in the obviousness inquiry.”  The Federal Circuit indicated that (1) common sense is typically invoked to provide a known motivation to combine, not to supply a missing claim limitation, (2) when common sense is used to supply a missing claim limitation, it should only be used when the missing limitation is unusually simple and the technology particularly straightforward, and (3) common sense cannot be used as a wholesale substitute for reasoned analysis and evidentiary support, especially when dealing with a limitation missing from the asserted prior art references.

Volkswagen Group of America, Inc. v. Signal IP, Inc., IPR2015-00968, Paper 6 (PTAB Aug. 25, 2015). To support an argument of obviousness, petitioner must make its obviousness evaluation explicit.  It can be important to identify a reason that would have prompted one skilled in the art to combine the elements in the way the claimed invention does.  Rather than providing articulated reasoning with rational underpinnings as to why one skilled in the art would have modified the references, petitioner only provides conclusory motivation contentions.  Petitioner’s argument lacks any reason, absent impermissible hindsight, why one skilled in the art would have combined the applied references to arrive at the claimed features.

Coalition for Affordable Drugs III LLC v. Jazz Pharmaceuticals, Inc., IPR2015-01018, Paper 17 (PTAB Oct. 15, 2015).  The Board was not persuaded by an obviousness challenge set forth in the petition.  The Board indicated that petitioner “glosses over the differences between the references and does not address the specific language of the steps in the independent claims, in context, to explain why it would have been obvious for one of ordinary skill to combine the prior art references in the manner recited.”  Comparing the arguments in the petition versus patent owner’s arguments in the preliminary response, the Board explained that “Petitioner does not provide adequate reasoning based on rational underpinnings to persuade us, in the absence of hindsight, that one of ordinary skill would made modified” the applied references to achieve the features of the challenged claims.

Samsung Elecs. Co., Ltd. v. Imperium (IP) Holdings, IPR2015-01233, Paper 14 (PTAB Dec. 1, 2015). The Board denied institution for two obviousness challenges that were presented as alternatives to separate anticipation challenges based on two references. Petitioner has not demonstrated a reasonable likelihood of prevailing in showing that the challenged claim would have been obvious over either reference if it fails to show that either reference does not anticipate. In order to demonstrate obviousness, petitioner must identify any differences between the claimed subject matter and the prior art. However, petitioner does not identify with sufficient specificity what limitations are missing from either reference that a person of ordinary skill in the art would have modified those references to supply. Instead, petitioner merely suggests that any element of the claim, if found to be missing from either reference, would have been obvious to a person of ordinary skill in the art under § 103 over those same references. The obviousness analysis requires more than an ipse dixit assertion that everything in a reference was also well known in the art. For any limitation petitioner asserts is well-known, there needs to be evidence of that knowledge and evidence of a rationale for modifying the teachings of the reference in accordance with that knowledge.

Sensus USA, Inc. v. Certified Measurement, LLC, IPR2015-01439, Paper 13 (PTAB Dec. 11, 2015) The Board denied institution for an obviousness ground over one reference that was presented as an alternative to an anticipation ground based on that reference.  The Board indicated that petitioner did not provide any meaningful analysis of its obviousness challenge independent of its anticipation challenge.  Instead, petitioner and its expert relied on a blanket assertion that the asserted reference “alone, or in combination with the knowledge of a person of ordinary skill in the art, discloses all the recitations of the Challenged Claim…and either anticipates or renders obvious the Challenged Claim.”  An obviousness analysis requires more than an ipse dixit assertion that everything in a reference was well known in the art.  Failure to present evidence of that knowledge and evidence of a rationale for modifying the teachings of a reference in accordance with that knowledge does not comply with 37 C.F.R. §§ 42.104(b)(4) and 42.104(b)(5).

Atoptech, Inc. v. Synopsys, Inc., IPR2014-01145, Paper 24 (PTAB Jan. 19, 2016) The Board disagreed with patent owner’s argument that the petition did not articulate the differences between the claims and the prior art.  The Board determined that petitioner met its burden of demonstrating the differences between the claims and the prior art, finding that when one prior art reference does not disclose a claim feature, petitioner explained that another prior art reference discloses that claim feature, and then petitioner provided reasons for modifying and combining the relied-upon references.

Oracle Corp. v. Crossroads Systems, Inc., IPR2014-01209, Paper 77 (PTAB Jan. 29, 2016) The Board disagreed with an obviousness challenge on the basis that petitioner and its expert “fail to account for the prior art as a whole and improperly pick and choose from the references in their reasoning to support their contention that the proposed combination of Bergsten and Hirai renders the claims obvious.” The Board indicated that “[t]his type of reasoning—where relevant parts of the reference are disregarded for the proposed combination without sufficient explanation of why a person of ordinary skill would do so—is precisely the type of hindsight reasoning that must be rejected.”

Owens Corning v. CertainTeed Corp., IPR2014-01397, Paper 37 (PTAB Mar. 8, 2016) The Board held that the age of a cited reference, in and of itself, does not negate its use in determining obviousness.  The older reference was approximately 60 years older than two other current references which were combined with the older reference.  The Board was not persuaded that the older reference’s age or subject matter would have prevented a person of ordinary skill in the art from combining it with the current references.  Even though there is a temporal gap, a skilled artisan is presumed to have been aware of the older reference (citing Custom Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d 955, 962 (Fed. Cir. 1986) (a “person of ordinary skill is a hypothetical person who is presumed to be aware of all the pertinent prior art.”)).

Securus Techs., Inc. v. Global Tel*Link Corp., IPR2015-00155, Paper 30 (PTAB Apr. 7, 2016) The Board determined that the challenged claims are not unpatentable over the combination of two references asserted by petitioner.   The cursory assertion that the references are drawn from the same broadly characterized field provides insufficient analysis concerning why and how a person of ordinary skill in the art would have modified or combined the prior art in the manner asserted, and inadequately articulates “reasoning with some rational underpinning to support the legal conclusion of obviousness.”  The Board also indicated that petitioner’s “perfunctory analysis is effectively rebutted” by patent owner’s declarant, who testified that the asserted references are directed to unrelated concepts and to very different architectures that are not easily combined.  The Board credited the testimony of patent owner’s declarant more strongly than that of petitioner’s declarant because patent owner’s declarant provided explicit reasoning to support his opinion that the asserted references are “concerned with different implementation settings, rely on different architecture structures, have technical incompatibilities, and are drawn from different fields.”

Securus Technologies, Inc. v. Globel Tel*Link Corporation, IPR2016-00267, Paper 8 (PTAB June 3, 2016).  The Board denied the petition because the petitioner failed to establish how the claims are obvious over the asserted references.  The Board rejected the petitioner’s rationale to combine the references because there was “no evidence of record that a person of ordinary skill in the art would have expected the [proposed] problem to exist at all.” The Board found there was no motivation to combine the references to create a system with the claimed features.

Costco Wholesale Corp. v. Robert Bosch LLC, IPR2016-00035, Paper 23 (PTAB Aug. 12, 2016).  The Board rejected petitioner’s argument that the challenged claims were obvious because a prior art technique “could be applied to the problem at hand.”  The Board determined that the argument was conclusory and insufficient because petitioner did not provide argument or evidence as to why one skilled in the art would have applied the prior art technique.  Conclusions with respect to obviousness must find support in the evidence of record.  An understanding that something could be applied to the problem at hand does not establish that the challenged claims are unpatentable as obvious.  Stating what one of skill in the art would have known or could have done to meet a claim limitation is not sufficient to establish that a claimed invention would have been obvious.

Nautilus Hyosung Inc. v. Diebold, Inc., IPR2016-00633, Paper 9 (PTAB Aug. 22, 2016) The Board denied institution of an obviousness challenge because the petition did not establish why one skilled in the art would have modified the references to arrive at the claimed invention.  “An assertion that something could be done does not articulate a reason why something would be done by one of ordinary skill in the art at the time of the invention and, therefore, raises a specter of impermissible hindsight bias in an obviousness analysis.” (emphasis original) The Board indicated that the testimony of petitioner’s expert does not present evidence or otherwise provide sufficient factual corroboration to support his opinion of obviousness.

Microsoft Corp. v. Parallel Networks Licensing, LLC, IPR2015-00483, Paper 81 (PTAB Aug. 11, 2016) The Board was not persuaded by petitioner’s obviousness challenges because petitioner and its declarant did not explain why one skilled in the art would have modified a primary reference to include the proposed modifications.  Even accepting the declarant’s assertions that the proposed modification was known, and had certain known advantages, neither the declarant nor petitioner explains why a person of ordinary skill in the art would have modified the primary reference to include the allegedly obvious feature. Neither petitioner nor the declarant provide sufficiently persuasive evidence that the proposed new feature provides any advantage not already present in primary reference, other than it would meet the limitations of the claims of the challenged patent. This type of hindsight-based reasoning is prohibited in an obviousness analysis.

Oral Hearing

Under 37 C.F.R. § 42.70, a party may request oral argument on an issue raised in a paper during an IPR, CBM or PGR proceeding.  Demonstrative exhibits may be used at the oral argument.  Oral arguments occur after the petitioner reply is filed and prior to the final written decision.

Snyopsys, Inc. v. Mentor Graphics Corp., IPR2012-00042, Paper 49 (PTAB Oct. 31, 2013) (representative).  Order sets forth the conduct of the oral hearing and the time period for service of demonstratives.

Bloomberg Inc. v. Markets-Alert Pty Ltd., CBM2013-00005, Paper 63 (PTAB Dec. 5 2013) (representative).  Order sets forth the conduct of the oral hearing including possible reservation of rebuttal time for patent owner on addressing the motion to amend since patent owner is the proponent of the motion.

Shaw Industries Group, Inc. v. Automated Creel Systems, Inc., IPR2013-00132, Paper 36 (PTAB Apr. 10, 2014) (representative)Order sets forth conduct of a consolidated oral hearing for two proceedings involving the same patent and similar prior art.

Cyanotech Corp. v. The Board of Trustees of the Univ. of Ill., IPR2013-00401, Paper 50 (PTAB June 18, 2014) The Board denied patent owner’s request to reschedule the oral hearing because its lead and backup counsel had a conflict with another trial in an unrelated district court litigation.  The Board indicated that it would not change the date of the oral hearing absent a showing of good cause, in view of the strict statutory timeline and the schedules of the judges.  Patent owner’s explanation that its counsel have a conflict is not sufficient, particularly because patent owner has been aware of the oral hearing date for approximately seven months before its request. 

Toyota Motor Corp. v. Leroy G. Hagenbuch, IPR2013-00483, Paper 35 (PTAB Aug. 25, 2014).  The Board denied patent owner’s request to have its back-up counsel, who was admitted pro hac vice, conduct the oral hearing for patent owner, rather than its lead counsel.   Patent owner indicated that it did not want to spend the money for its lead counsel to travel to attend the oral hearing.  Noting that its previous trial hearing order stated that “The Board expects lead counsel for each party to be present at oral hearing,” the Board reasoned that this “statement is short of a requirement that lead counsel be present.”  However, because patent owner’s backup counsel is not a registered practitioner before the PTO, the Board expected lead counsel to attend.  “Patent Owner’s general desire to conserve cost has not persuaded us to deviate from that stated expectation.” 

Butamax Advanced Biofuels LLC v. Gevo, Inc., IPR2013-00539, Paper 25 (PTAB Oct. 10, 2014) Petitioner requested an oral hearing.  Patent owner did not request an oral hearing.  Instead, patent owner asked the Board if it could be excused from attending.  Patent owner’s IPR counsel “informed the Board that its client did not wish to undertake the financial burden involved in counsel preparing for and attending the oral hearing, and wished to rest on its previously filed Response to the Petition.”  The Board indicated that petitioner has a statutory right to a hearing, and encouraged patent owner to attend the oral hearing to assist the Board in deciding the issues presented in the proceeding.  Patent owner declined the possibility of holding the oral hearing telephonically, arguing that even a telephonic hearing would not address patent owner’s financial considerations.  The Board emphasized the importance to patent owner’s counsel to attend the hearing to answer any questions the Board may have or respond to petitioner’s arguments.  The Board also stressed its expectation that, so long as patent owner is represented by counsel before the Board, counsel will attend all proceedings which materially affect patent owner’s interests.  Patent owner indicated that it would file a motion for pro hac vice admission of its general counsel attend the oral hearing, in place of currently designated counsel.

Olympus America Inc. v. Perfect Surgical Techniques, Inc., IPR2014-00233, Paper 45 (PTAB Jan. 27, 2015).  The Board denied petitioner’s request to reschedule the oral hearing so that petitioner’s back-up counsel could attend the hearing.  Petitioner argued that its back-up counsel will be out of the country on a trip that was planned before the scheduling order was issued.  The Board declined the request because petitioner failed to raise the request for seven months, and petitioner raised no objection to the scheduling orders.  The Board therefore denied the request as untimely.   

 

Panel Composition

The following cases address attempts by the parties to change the composition of the panel of the Board appointed to adjudicate the review.

Mylan Pharmaceuticals Inc. v. Astrazenaca AB, IPR2015-01340, Paper 16 (PTAB May 2, 2016).  The Board granted rehearing of a petition and instituted the proceeding against claims directed to a pharmaceutical compound.  In the request for rehearing, petitioner objected to the inclusion on the panel of a former partner at the law firm representing patent owner.  Petitioner did not allege a conflict of interest, but argued that the mere appearance of impropriety warranted rehearing and exclusion of the former partner.  The former partner was replaced on the panel that instituted the proceeding.  The institution decision did not address the replacement.

Coherus Biosciences Inc. v. Abbvie Biotechnology Ltd., IPR2016-00172, Paper 20 (PTAB June 29, 2016).  The Board denied patent owner’s request for rehearing of the institution decision and rejected the implications that the panel composition was improper. Patent owner argued that the APJ who authored the institution decision: (1) was a lawyer in the Wilmington, Delaware office of the law firm of Petitioner’s counsel as of August 2014, (2) that office was the same office in which Petitioner’s back-up counsel also was located in August 2014, and (3) the authoring APJ and the back-up counsel appeared as co-counsel in two lawsuits.  Patent Owner argued that this information shows an appearance of impropriety sufficient to justify reconsideration by a newly composed panel.  The Board disagreed, noting that after one year has passed, a federal employee, such as an APJ, no longer has a “covered relationship” with a former employer.  Further, the Board did not find that patent owner’s contentions provide a sufficient basis for requesting a newly composed panel. First, the rehearing request fails to address the Ethical Standards or explain why the information patent owner presents amounts to a “covered relationship” between any of the panel members and petitioner’s counsel. Indeed, no “covered relationship” within the meaning of 5 C.F.R. § 2635.502 exists—or existed at any time during the pendency of this case— between the authoring APJ and counsel for any party in the case, because the authoring APJ had severed her relationship with petitioner’s law firm more than a year before participating in the present case.  Under the controlling regulation regarding covered relationships, patent owner failed to show an appearance of impropriety.

PGR Eligibility

PGR proceedings are only available for patents having an effective filing date on or after March 16, 2013.  The following cases address issues of eligibility for post-grant review.

Inguran, LLC v. Premium Genetics (UK) Ltd., PGR2015-00017, Paper 8 (PTAB Dec. 22, 2015) Entitlement to the benefit of an earlier date under
§§ 119, 120, 121, and 365 is premised on disclosure of the claimed invention in the manner provided by § 112(a) (other than the requirement to disclose the best mode) in the earlier application. Consequently, a patent that issues from an application filed after March 16, 2013, and that claims priority to an application filed before March 16, 2013, is available for post-grant review “if the patent contains . . . at least one claim that was not disclosed in compliance with the written description and enablement requirements of § 112(a) in the earlier application for which the benefit of an earlier filing date prior to March 16, 2013 was sought.”

US Endodontics, LLC v. Gold Standard Instruments, LLC, PGR2015-00019, Paper 17 (PTAB Jan. 29, 2016) The Board granted institution of a post-grant review of a patent under 35 U.S.C. §§ 112(a), 102 and 103, determining that the patent was subject to the first-inventor-to-file provisions of the AIA. Petitioner argued that the patent is eligible for post-grant review because claims in the application do not have written description support and are not enabled by the disclosure of earlier priority applications and thus are not entitled to the pre-AIA filing date of the earlier applications. The Board determined that petitioner met its burden to show that the patent is eligible for post-grant review because the priority applications of the patent do not provide an enabling disclosure for the challenged claims.

Dr. Reddy’s Labs., Ltd. v. Helsinn Healthcare S.A., PGR2016-00008, Paper 11 (PTAB Aug. 17, 2016). The Board denied institution on the grounds that petitioner did not provide a threshold showing that an alleged public sale was actually a public sale. Patent owner’s subsidiary entered into a supply and purchase agreement with a third party, in which the subsidiary and the third party would enter into an exclusive sales arrangement. Petitioner argued that the the agreement was made public through the third party’s SEC filings and through press releases prior to the critical date of the patent. The Board disagreed with petitioner’s arguments that the agreement was a public sale. The on-sale bar is not focused merely on whether a prior sale or offer for sale was made public. Rather, the sale itself was must make the claimed invention publicly available in order to trigger the on-sale bar. The supply and purchase agreement was subject to strict confidentiality requirements and was not a public sale.

Printed Publication

A petitioner in an IPR, CBM or PGR proceeding may rely on printed publications as prior art to challenge claims of a patent.  The petitioner has the burden to establish that the asserted reference qualifies as a printed publication by demonstrating public accessibility of the asserted reference.  The following cases address whether references asserted by the petitioner qualify as printed publications.

EMC Corp. v. Personal Web Technologies, LLC, IPR2013-00087, Paper 69 (PTAB May 15, 2014) The Board determined that a user manual of a software program qualified as a printed publication.  The user manual had a copyright date and a date of posting more than one year prior to the critical date.  Petitioner submitted evidence showing that an online forum, which was a publicly accessible site, advertised the software program and made the software, including the user manual, available for download in four different directories.  In addition, petitioner submitted testimony by a technology archivist showing that an archived copy of the manual was identical to the manual relied upon by petitioner.  The Board found unavailing patent owner’s argument that petitioner’s witnesses did not personally review or post the user manual prior to the critical date.  It is unnecessary for witnesses to have reviewed a reference personally prior to the critical date in order to establish publication.

Groupon, Inc. v. Blue Calypso, LLC, CBM2013-00035, Paper 45 (PTAB Dec. 17, 2014) The Board determined that a technical report allegedly published by a university department did not qualify as a printed publication because petitioner did not provide sufficient evidence to show that technical report was publicly available.  One of the authors testified that the technical report was available on the department’s website and was “publicly available for viewing and downloading.” Petitioner also submitted evidence showing that the technical report was identified on a list of publications of another one of the authors with a date of availability.  However, petitioner did not provide evidence showing that technical report was downloaded or otherwise disseminated, or showing how interested persons could locate the report as of the critical date.  The Board also noted that the technical report does not contain a date or indicia of dissemination.  The Board determined that the technical report was not publicly available because only those with knowledge of the report would know that the report was available on the department’s website.

Square, Inc. v. Unwired Planet, LLC, CBM2014-00156, Paper 11 (PTAB Dec. 24, 2014) The Board determined that a relied upon reference did not qualify as a printed publication based on the information presented in the petition.  The reference includes “ISBN 952-90-8115-4 1996-09-30” on its title page. Patent owner argued that the ISBN (International Standard Book Number) identification does not show publication on Sept. 30, 1996, because the ISBN may be obtained before the work is published.  The Board agreed with patent owner, finding that petitioner did not provide evidence about what an ISBN number is, how it is generated, and what it purports to show, which would allow the Board to assign any weight to it.  The Board also noted that the reference indicates that the author controls distribution, which weighs against finding that it is publicly available printed publication.

Actavis, Inc. v. Research Corp. Techs., Inc., Case IPR2014-01126, Paper 22 at 9 (PTAB Jan. 9, 2015) The Board determined that a thesis relied upon by petitioner did not qualify as a printed publication.  To qualify as a printed publication under 35 U.S.C. §§ 102 and 311(b), a reference must have been sufficiently accessible to the public interested in the art before the critical date.  A reference is considered publicly accessible if it was disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art, exercising reasonable diligence, can locate it.  The Board determined that petitioner did not present evidence showing that the thesis was indexed, cataloged, shelved, or even deposited in the university library.  The Board determined that an article generally referring to the thesis was not evidence of public accessibility because the article did not identify the thesis with particularity and did not indicate that the university library granted access to the thesis.

Cisco Sys., Inc. v. Constellation Techs., L.L.C., IPR2014-01085, Paper 11 (PTAB Jan. 9, 2015) The Board denied institution on the basis that a paper relied upon by petitioner did not qualify as a printed publication based on the information presented in the petition.  The paper is described on its face as an “Internet Draft…working document[] of the Internet Engineering Task Force (IETF).”  The Board indicated that petitioner did not present sufficient evidence, by declaration testimony or other documentary evidence, that indicates that the paper, which was “valid” for only a limited time and was deemed inappropriate for citation, was accessible to the interested public.  Indeed, the petition is silent on the manner in which paper was purportedly “published as an Internet-Draft in June 1999.”

Dell, Inc. v. Selene Commc’n Techs., LLC, IPR2014-01411, Paper 23 (PTAB Feb. 26, 2015) The Board held that an expert declaration is not enough to prove a prior art reference’s publication date where the expert declaration merely repeats assertions made by petitioner. Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight. 37 C.F.R. § 42.65(a).

Temporal Power, Ltd. v. Beacon Power, LLC, IPR2015-00147, Paper 8 (PTAB Apr. 27, 2015) The Board denied institution on the basis that a reference included in all grounds of challenge was not demonstrated to be a printed publication in the petition.  The petition identified the reference as a paper for the Purdue University School of Electrical Engineering that was published in 1992.  The cover page of the paper states that the paper “has been made available through Purdue e-Pubs, a service of the Purdue University Libraries.”  However, the Purdue e-Pubs system was created and launched after the filing date of the patent.  The Board was not persuaded by the declaration testimony provided by petitioner testimony to support its assertion that the paper qualifies as a printed publication.  The declarant stated that “[i]t is [his] understanding that [the paper] is a prior art reference to the ‘804 patent.”  The Board indicated that the declarant’s testimony is entitled to little, if any weight, because he did not disclose the underlying facts or data on which his opinion was based.

Riverbed Tech., Inc. v. Silver Peak Systems, Inc., IPR2014-00245, Paper 42 (PTAB June 9, 2015) A reference that is used to show motivation for a proposed modification in an obviousness challenge is not required to be part of the obviousness challenge.  If the reference is not part of the obviousness challenge, the reference does not need to qualify as a printed publication.

Symantec Corp. v. The Trustees of Columbia Univ., IPR2015-00370, Paper 13 (PTAB June 17, 2015) The Board denied institution, finding that a reference relied upon in each ground of challenge was not demonstrated to be a printed publication in the petition.  Petitioner relied on a thesis with the date “March 1999,” an indication that it was “Presented to the Faculty of the Graduate School of Engineering of the Air Force Institute of Technology…” and an indication of “Approved for public release; distribution unlimited.”  A document purporting to be a thesis, without more, does not establish that the document is a printed publication.  Petitioner did not provide sufficient evidence, by declaration or documentation, tending to show the public accessibility of the reference prior to the critical date of the patent.  Although the thesis indicates that it was approved for public release, the petition does not provide evidence extrinsic to the thesis showing that the thesis may have been released or distributed to the public, or that the thesis was entered into a publicly accessible database to be sufficiently accessible to the public interested in the relevant art.

Apple, Inc. v. DSS Tech. Mgmt., Inc., IPR2015-00369, Paper 9 (PTAB June 25, 2015). The Board denied institution of one of the grounds of challenge on the basis that petitioner did not present sufficient evidence to demonstrate that an asserted thesis qualifies as a printed publication under 35 U.S.C. § 102.  Petitioner has the burden to make a threshold showing that a reference is “printed publication” prior art under 35 U.S.C. §§ 102 and 311(b).  The Board must decide whether to institute a trial based on “the information presented in the petition.” 35 U.S.C. § 314(a).  The Board indicated that petitioner did not provide any evidence to establish public availability of the thesis (e.g., the thesis was indexed, cataloged, and shelved in the university library prior to the critical date).  Therefore, petitioner did not make a sufficient preliminary showing that the thesis is a printed publication prior to the critical date of the challenged patent.

Dish Network L.L.C. v. Dragon Intellectual Property, LLC, IPR2015-00499, Paper 7 (PTAB July 17, 2015). The Board determined that a thesis relied upon by petitioner was not demonstrated to be a printed publication prior to the critical date of the challenged patent.  Petitioner asserted an MIT Library archive stamp date as evidence of publication of the thesis.  Petitioner also submitted a declaration from the thesis author’s advisor, who testified that he was familiar with the process of publishing, indexing and cataloging theses at the university library at the relevant time.  The Board explained that the declarant’s testimony lacks personal knowledge as to when and how the thesis was made available to the public, and that his testimony is insufficient evidence of the library’s specific practices as to indexing and cataloging papers in the relevant time period.  The Board also indicated that the declarant’s testimony is insufficient evidence as to whether the research tools available would have been sufficient to permit an interested researcher to locate and examine the thesis.

LG Elecs., Inc. v. Advanced Micro Devices, Inc., IPR2015-00329, Paper 13 (PTAB July 10, 2015) The fact that a date is printed on the face of a reference, without more, is not enough to establish that the reference was publicly accessible on that date.  The presence of a copyright notice, together with the listing of the reference in an IDS, may be taken as some evidence of public accessibility as of a particular date.

Apple Inc. v. DSS Tech. Mgmt., Inc., IPR2015-00369, Paper 14 (PTAB Aug. 12, 2015) Petitioner has the burden to establish in its petition a reasonable likelihood of success, including, among other things, making a threshold showing that a relied upon reference is a “printed publication” within the meaning of 35 U.S.C. §§ 102 and 311(b) such that it would be available as prior art in an inter partes review proceeding.  The fact that patent owner did not contest the public availability of the relied upon reference does not mean that the Board cannot determine whether that reference was publicly available as of the critical date.  The Board indicated that the stamped date on the face of the reference is a hearsay statement to the extent petitioner is relying on it for the truth of what it states, and petitioner did not establish that any hearsay exception or exclusion applies. An uncorroborated archive date stamp unsupported by evidence linking archiving with public accessibility is insufficient to establish a threshold showing for printed publication status.

Google, Inc. v. ART+COM Innovationpool GMBH, IPR2015-00789, Paper 8 (PTAB Sept. 2, 2015) The Board denied institution, finding that petitioner did not demonstrate that the relied-upon reference qualified as a printed publication.  The reference was purportedly contained on a CD-ROM that was distributed at a conference before the critical date of the patent.  Noting that the party seeking to introduce a reference should produce sufficient proof of its dissemination or that it has otherwise been available and accessible, the Board found petitioner’s evidence insufficient.  The Board determined that the document itself contained no indication of the date of distribution, and supporting declaration testimony only established that the conference took place on the indicated day, not that the document relied upon in the petition is the same document that was distributed.  The Board also agreed with patent owner that including the document on an IDS during prosecution does not constitute an admission that the document is prior art before the critical date of the patent.

Lantz Medical, Inc. v. Bonutti Research, Inc., IPR2015-00995, Paper 11 (PTAB Oct. 21, 2015) Petitioner relied upon, as an anticipatory reference, an operating manual included with a product that was sold prior to the critical date of the patent.  The Board determined that the operating manual was not a printed publication under § 102.  The Board determined that petitioner did not provide sufficient evidence to support the contention that the operating manual is a printed publication, noting that petitioner merely stated that the associated product “was on sale at least as early as 1992 – the date of publication of the operating manual.” Although Petitioner contends that the product was on sale more than one year before the earliest effective filing date of the challenged patent, petitioner did not provide sufficient evidence to support a threshold showing that the operating manual is a printed publication before the critical date.

Air Liquide Large Industries U.S. LP v. Praxair Technology, Inc., IPR2015-01074, Paper 11 (PTAB Oct. 26, 2015).  The Board denied institution, finding that several relied-upon references did not qualify as printed publications under § 102.  Two of the references were presentations that were alleged to have been given at separate conferences.  The Board determined that the presentations were not printed publications because petitioner did not provide corroborating evidence that the presentations were ever presented at the conferences, or evidence establishing the nature of the presentations and dissemination of the information. Another reference includes public regulatory filings. Petitioner provided declaration evidence indicating that such regulatory filings could be obtained from a state railroad commission by a FOIA-like procedure, and that those of ordinary skill in the art regularly obtained such regulatory filings.  The Board determined that the regulatory filings did not qualify as a printed publication because petitioner did not provide evidence indicating that the relied-upon regulatory filings were actually obtained or could have been obtained, and that the relied-upon regulatory filings would not be subject to disclosure because they may contain confidential information.

Eastman Kodak Co. v. CTP Innovations, LLC, IPR2014-00788, Paper 35 (PTAB Nov. 25, 2015) Evidence presented by petitioner, after the filing of the petition, showing public availability of a reference does not need to be submitted as supplemental information.  The evidence can be submitted as part of petitioner’s reply if the evidence directly addresses arguments made in the patent owner response.  In its patent owner response, patent owner alleged that a declaration submitted with the petition did not establish that the relied-upon reference was distributed outside the company that produced the reference.  With its reply, Petitioner submitted a supplemental declaration with additional records showing that the reference was sent to a third party, who distributed the reference to the public.  The Board disagreed with patent owner that evidence submitted to support public availability of a reference cannot be supplemental evidence, and that it must be submitted as supplemental information in order to be admitted.  The evidence was directly responsive to patent owner’s arguments.

Int’l Bus. Machs. Corp. v. Intellectual Ventures II, LLC, IPR2015-01322, Paper 12 (PTAB Dec. 8, 2015).   The Board determined that a dissertation did not qualify as a printed publication under 35 U.S.C. § 102(b) because it was not generally accessible and petitioner did not address the level of diligence that would have been necessary to obtain a copy.  However, the Board determined that the dissertation qualified as a printed publication under 35 U.S.C. § 102(a) based on the circumstances of the publication.

Indoor Skydiving Germany GmbH v. Ifly Holdings LLC, IPR2015-01272, Paper 14 (PTAB Jan. 5, 2016) The Board denied institution, finding that several references relied upon by petitioner were not demonstrated to be publicly accessible in the relevant time frame, or were not demonstrated to be prior art printed publications. In its request for rehearing, petitioner argued that the Board should have independently determined that the references were viable prior art publications, rather than rely on patent owner’s arguments.  The Board rejected this argument because it attempts to shift, to the Board, petitioner’s statutory burden to demonstrate a reasonable likelihood of prevailing with respect to the challenged claims.  The Board also rejected petitioner’s argument that the documents qualify as prior art under FRE 901(8) as ancient documents, finding that FRE 901(8) pertains to authenticity, not public accessibility, and that this was a new argument not presented in the petition.

Intex Recreation Corp. v. Bestway Inflatables & Material Corp., IPR2016-00180, Paper 9 (PTAB Mar. 25, 2016).  The Board authorized petitioner to file a reply to patent owner’s preliminary response to address the sufficiency of a copyright notice on three asserted prior art references. The Board indicated that additional briefing was warranted due to the varying interpretation among different panels of the PTAB as to whether a copyright notice amounts to sufficient evidence of public accessibility for purposes of institution.  The Board, however, declined authorization for petitioner to submit any supplemental evidence to cure any evidentiary issues regarding the public accessibility of the asserted references.  The Board indicated that “[p]etitioner was fully aware of the need to prove that element of its case at the time it filed its Petition, and, thus, evidence of that nature should have been submitted with the Petition had Petitioner wanted it considered for purposes of institution.”

Actifio, Inc. v. Delphix Corp., IPR2015-00016, Paper 69 (PTAB Apr. 13, 2016) The Board indicated that petitioner can rely upon evidence not submitted with the petition to demonstrate that an asserted reference qualifies as a printed publication, contrary to patent owner’s argument.  As indicated by the Federal Circuit, there is a difference between the threshold for instituting a trial (35 U.S.C. 314(a)) and proving unpatentability of a claim in trial (35 U.S.C. § 316(e)).  Patent owner did not challenge the prior art status of the asserted publications in its preliminary response.  After institution, petitioner provided declarations in response to evidentiary objections by patent owner.  37 C.F.R. § 42.64(b)(2) authorizes serving supplemental evidence, and petitioner properly relied on the supplemental evidence in its reply.  Petitioner’s evidence established that the asserted publications are printed publications.

Hospitality Core Servs. LLC v. Nomadix, Inc., IPR2016-00052, Paper 8 (PTAB Apr. 27, 2016) The Board denied institution, in part, because petitioner did not make a threshold showing that an asserted reference qualified as a printed publication.  The asserted reference was a white paper. Petitioner’s declarant testified that the white paper was published on his company’s website and was distributed to several major hotel chains the company was working with at that time.  The Board, however, noted that the declarant did not explain why the white paper would have been printed on his company’s website when the pages of the white paper were marked with “confidential.”  The Board also indicated that, although the declarant stated that the white paper was “distributed to a number of major hotel chains” and “many other existing and prospective customers”— with no clear indication of when — the declaration does not allege, let alone show, that distribution to those entities means that the document must have been sufficiently accessible to the public interested in the art. Therefore, petitioner has not made a satisfactory threshold showing that the white paper is a printed publication.

Alarm.com Inc. v. Vivint, Inc., IPR2016-00155, Paper 14 (PTAB Apr. 28, 2016) The Board denied institution on the basis that petitioner did not present a threshold showing than an asserted reference qualifies as a printed publication.  Petitioner argued that the reference qualifies as a printed publication because it has a copyright date of 1997 and bears a Library of Congress Catalog Card Number (LCCCN).  The Board determined that the copyright date, by itself, is insufficient to demonstrate that the reference was made publicly accessible.  “The copyright date simply informs readers of the underlying claim to copyright ownership” in the reference.  Without more evidence, the copyright date does not demonstrate that the reference was available prior to the critical date of the patent.  Similarly, the Board determined that the LCCCN, even when considered together with the copyright date, is insufficient to demonstrate the reference was publicly accessible prior to the critical date of the patent.   Petitioner did not provide sufficient evidence to demonstrate that the reference was reasonably accessible to the public interested in the art.

I-Blason LLC v. Aevoe Corp., IPR2016-00231, Paper 6 (PTAB May 18, 2016) The Board denied institution of an obviousness challenge because petitioner had not made a threshold showing that a copy of a webpage is a printed publication under § 102 and therefore qualifies as prior art to the challenged patent. The evidence provided to demonstrate that the content of the webpage was made publicly available in 2009 is a representation that the document is a “true and correct copy” of a printout of a circa-2015 download. The Board indicated that this evidence is insufficient to establish that the copy of the webpage presented with the petition is the same version that was made publicly available in 2009. Further, the date a product may have been available on a website, or dated product reviews, also are insufficient to establish the content of the website that may have been made available to the public in 2009.

Argentum Pharmaceuticals LLC v. Research Corp. Techs., Inc., IPR2016-00204, Paper 19 (PTAB May 23, 2016) The Board determined that petitioner did not demonstrate that an asserted reference qualified as prior art.  Petitioner relied on a joint statement in the counterpart district court litigation involving patent owner and defendants other than petitioner.  The joint statement provided that “for purposes of this litigation, [the reference] was publicly accessible more than one year before the earliest prior date for the [challenged] patent and constitutes a ‘printed publication’ within the meaning of 35 U.S.C. § 102(b).”  Such a joint statement does not provide a sufficient “threshold showing” of public accessibility.  Patent owner may have agreed to stipulate to certain facts during the district court litigation to streamline matters at trial, or had other reasons to stipulate on the issue in a case involving different parties in a different form, regardless of whether the asserted reference was, in fact, publicly accessible.

Xactware Sols. V. Eagle View Techs., Inc., IPR2016-00582, Paper 15 (PTAB Aug. 16, 2016) The Board denied institution on the basis that petitioner did not present a threshold showing that an asserted reference was publicly accessible prior to the critical date of the challenged patent.  Neither the petition nor its declarant discussed the date of public availability of the reference.  Although the reference contained some indicia related to the date of public accessibility, including a date and a library code, and a bar code on the back cover, there was no evidence as to the meaning of the indicia or when the bar code was applied to the document.  The reference also includes a series of numbers that appears to be a library Dewey Decimal Number and a university stamp, but petitioner did not provide any explanation of this indicia nor provide an affidavit explaining when this indicia was added to the document.  In addition, petitioner did not provide any corroborating evidence of the public accessibility of the reference.

Prior Art Requirements

In IPR proceedings, a petitioner may only assert grounds of challenge that can be raised under 35 U.S.C. § 102 or 305 U.S.C. § 103 and only on the basis of prior art consisting of patents and printed publications.  In PGR and CBM proceedings, a petitioner may also present challenges under 35 U.S.C. § 101 and 35 U.S.C. § 112.   The following cases address these prior art requirements.

Sequenom, Inc. v. The Board of Trustees of the Leland Stanford Junior Univ., IPR2014-00337, Paper 11 (PTAB July 16, 2014).  A provisional application does not qualify as 35 U.S.C. § 102(e) prior art in an IPR.  All of the grounds of unpatentability presented in the petition were based on a provisional application, which petitioner argued was prior art under § 102(e).  The Board disagreed and denied the petition.  Two types of documents may be relied upon under § 102(e) to show that claims are unpatentable: (1) an application for a patent that is published under § 122(b), or (2) a patent granted on an application for patent.  A provisional application does not meet either of these criteria.  35 U.S.C. § 122(b)(iii) provides that “[a]n application shall not be published if that application is…(iii) a provisional application filed under section 111(b) of this title.”  Consequently, a provisional application is not an application for patent that is published under § 122(b).  Further, a provisional application is not a patent.

NRT Tech. Corp. et al. v. Everi Payments, Inc., CBM2015-00167, Paper 14 (PTAB Jan. 22, 2016). A reference that is prior art under only 35 U.S.C. § 102(e) may not be asserted in a CBM review.  AIA § 18(a)(1)(C).

Sawai USA, Inc. v. Nissan Chemical Industries, Ltd., IPR2015-01647, Paper 9 (PTAB Feb. 4, 2016) Petitioner relied on arguments made in an interference proceeding of a related patent to argue that patent owner disclaimed or otherwise lost the right to claim the features of the challenged claims.  The Board indicated that interference estoppel cannot serve as the basis to challenge the patentability of claims in an IPR.  Under § 311(b), a petitioner may rely only on a ground of unpatentability that could be raised under § 102 or § 103 and only on the basis of patents or printed publications. Interference estoppel does not meet these requirements.

Maxlinear, Inc. v. Cresta Tech. Corp., IPR2015-00594, Paper 90 (PTAB Aug. 15, 2016) A reference is not prior art under 35 U.S.C. § 102(e) unless it was created “by another.”  A reviewing body “must look beyond the superficial fact that the references were issued to different inventive entities.  What is significant is not merely the differences in the listed inventors, but whether the portions of the reference relied on as prior art, and the subject matter of the claims in question, represent the work of a common inventive entity.” Riverwood Int’l Corp. v. R.A. Jones & Co., 324 F.3d 1346, 1356 (Fed. Cir. 2013).

Priority - Establishing Earlier Critical Date of Reference

The following cases address the requirements for establishing that an asserted reference is entitled to the date of an earlier application for the purpose of establishing that the asserted reference is prior art against the challenged patent.

Polaris Wireless, Inc. v. TruePosition, Inc., IPR2013-00323, Paper 9 (PTAB Nov. 15, 2013) A patent is not presumed to be entitled to the earlier filing dates of ancestral applications which do not share the same disclosure as the challenged patent.  However, petitioner first has to raise the issue in its petition, by specifically identifying the features, claims, and ancestral applications allegedly lacking § 112, first paragraph, written description and enabling disclosure support for the claims based on the identified features. Then, patent owner has to make a sufficient showing of entitlement to earlier filing date(s), in a manner that is commensurate in scope with the specific points and contentions raised by petitioner.

Focal Therapeutics, Inc. v. Senorx, Inc., IPR2014-00116, Paper 8 (PTAB Apr. 22, 2014)Since petitioner has the burden to show a reasonable likelihood that it would prevail on a ground of unpatentability, petitioner has the initial burden to specifically identify any features in the claims which lack § 112 support in a priority application.  After such a showing, patent owner then has the burden to demonstrate that the priority application adequately discloses all the limitations in the claims at issue, in a manner that is commensurate in scope with the specific points and contentions raised by petitioner.

Schott Gemtron Corp. v. SSW Holding Co., Inc., IPR2013-00358, Paper 106 (PTAB Aug. 20, 2014). In determining whether the challenged claims are obvious, the Board resolved the level of ordinary skill in the art at the time of the invention.  The Board first analyzed whether the challenged claims are supported by earlier-filed provisional applications to determine the date of the invention.  Finding that the disclosure of the first provisional applications provides written description support for the challenged claims, the Board determined that the date of invention for the challenged claims is the filing date of the first provisional application. The Board then resolved the level of ordinary skill in the art at the time of the first provisional application.

Ford Motor Co. v. Paice LLC & the Abell Foundation, IPR2014-00568, Paper 12 (Sept. 8, 2014) The Board confirmed that a relied-upon reference was prior art against the challenged patent because the challenged patent was not entitled to the filing date of an earlier application.  Under 35 U.S.C. § 120, a patent claim is entitled to the benefit of the filing date of an earlier-filed application only if the disclosure of the earlier application provides written description support for the patent claim as required by 35 U.S.C. § 112, ¶ 1. The test for determining compliance with the written description requirement is whether the disclosure of the earlier-filed application reasonably conveys to those skilled in the art that the inventor had possession at that time of the claimed subject matter.  The Board credited petitioner’s expert that a person of ordinary skill in the art would not have understood the earlier application to support a particular claim feature in the challenged patent.

Dynamic Drinkware LLC v. National Graphics, Inc., IPR2013-00131, Paper 42 (PTAB Sep. 12, 2014). The Board indicate that petitioner had not met its burden of production by merely asserting that an asserted reference was entitled to the earlier date of its provisional application.  To demonstrate that the asserted reference is entitled to an earlier date, petitioner had to demonstrate that the provisional application satisfies the requirements of 35 U.S.C. § 112 with respect to at least one claim of the asserted reference.

CeramTec GmbH v. Ceramedic LLC, IPR2015-01328, Paper 23 (PTAB Dec. 16, 2015). The Board denied institution because petitioner did not demonstrate that a relied-upon reference was prior art under 35 U.S.C. § 102(b) to the challenged patent.  Petitioner argued that the challenged patent was not entitled to the priority date of a PCT application because the PCT application disclaimed a feature recited in the challenged claims.  The Board disagreed, finding that there was no clear disclaimer of the recited features, either in the specification of the PCT application or in the prosecution history of the challenged patent. The Board therefore determined that the challenged patent is entitled to the priority date of the PCT application, and as such, a relied-upon reference did not qualify as prior art.

Securus Technologies, Inc. v. Global Tel*Link Corp., IPR2015-00153, Paper 12 (PTAB May 1, 2015) A petitioner has the burden of demonstrating that a relied-upon reference qualifies as prior art against the patent under review.  The Board denied the petition because the petitioner did not demonstrate that the provisional of the relied-upon reference supports the subject matter of the reference in compliance with 35 U.S.C. § 112, first paragraph.

Ariosa Diagnostics, Inc. v. Illumina, Inc., IPR2014-01093, Paper 69 (PTAB Jan. 7, 2016).  As the party challenging the patentability of the claims, petitioner has the burden to demonstrate that a relied-upon reference is entitled to its provisional fling date.  Petitioner must therefore demonstrate that the claims of the reference patent publication relied upon by petitioner are supported by the provisional application, in compliance with 35 U.S.C. § 112, first paragraph.  Although the reference patent publication incorporates the provisional by reference, that incorporation, by itself, does not meet the requirement that the claims of the reference patent publication are supported by the provisional.

VMware, Inc. v. Clouding Co., IPR2014-01304, Paper 35 (PTAB Jan. 7, 2016). The Board determined that petitioner did not demonstrate that an asserted reference is entitled to the priority dates of earlier provisional applications. Citing the Federal Circuit’s Dynamic Drinkware decision, petitioner has the burden of persuasion to prove that the challenged claims are unpatentable by a preponderance of the evidence, and the burden of production to demonstrate that the asserted reference is prior art to the patent. Petitioner argued that the earlier provisional applications provide support for the subject matter of the reference patent. However, petitioner is required to demonstrate that the earlier provisional provide adequate written description support for the claims of the reference patent. Therefore, petitioner has failed to demonstrate the reference patent is prior art to the challenged patent.

Benitec Biopharma Ltd. v. Cold Spring Harbor Lab., IPR2016-00015, Paper 7 (PTAB Mar. 23, 2016).  The Board denied institution, in part, because petitioner did not demonstrate that an asserted reference qualified as prior art under 35 U.S.C. § 102(e) against the challenged patent.  To qualify as § 102(e) prior art against the patent, petitioner was required to show that the asserted reference is entitled to the earlier filing date of its provisional application.  To make such a showing, petitioner must demonstrate that the provisional application provides written description support for at least one claim of the reference patent.   Petitioner did not meet its burden.  Petitioner presents no expert opinion with respect to the understanding of one of ordinary skill in the art, including with respect to the disclosure of the provisional of the reference patent.  Petitioner’s limited evidence and assertion that “critical elements” are expressly described in the provisional is insufficient to demonstrate that one skilled in the art would have understood the provisional to expressly, or inherently, disclose the features claimed in the reference patent.

Benitec Biopharma Ltd. v. Cold Spring Harbor Lab., IPR2016-00017, Paper 7 (PTAB Apr. 6, 2016). The Board denied institution, in part, because the asserted reference was not prior art to the challenged claims. Petitioner alleged that the asserted reference was prior art under 35 U.S.C. § 102(e) because the reference claimed priority to a provisional application that predated the filing date of the patent. To make such a showing, petitioner must demonstrate that the provisional application provides written description support for at least one claim of the asserted reference (citing Dynamic Drinkware, 800 F.3d 1375, 1381 (Fed. Cir. 2015)). However, the Board noted that Petitioner did not present any expert opinion with respect to the understanding of one of ordinary skill in the art, much less with respect to the disclosure of the provisional application. The Board was not persuaded by petitioner’s argument that the provisional application inherently disclosed the ranges claimed in the asserted reference because petitioner did not discuss how one of ordinary skill in the art would understand the disclosure of the provisional application. The Board therefore determined that petitioner did not demonstrate that the asserted reference qualified as prior art under 35 U.S.C. § 102(e).

Priority - Establishing Earlier Date of Invention for Challenged Patent

A patent owner may be able to show that claims of a patent challenged in an IPR, CBM or PGR proceeding are entitled to an earlier date of invention, for the purpose of antedating a prior art reference asserted against the patent.  The following cases involve attempts by patent owners to antedate asserted references.

K-40 Electronics, LLC v. Escort, Inc., IPR2013-00203, Paper 6 (PTAB Aug. 29, 2013)The Board determined that Rule 131 Declarations submitted during prosecution were insufficient to remove references relied upon in the petition as prior art.  Petitioner’s grounds of unpatentability relied on two references, the Fleming reference and the Hoffberg reference.  During prosecution of the challenged patent, patent owner submitted a Rule 131 Declaration to swear behind the Fleming reference.  During prosecution of a grandparent application, patent owner submitted a Rule 131 Declaration to swear behind the Hoffberg reference.  The Board determined that the Declaration submitted during the prosecution of the challenged patent was insufficient to remove the Fleming reference as prior art for two reasons.  First, the Declaration states that some features were actually reduced to practice while other features were constructively reduced to practice at a later date, but the Declaration fails to identify which of the claimed features were actually reduced to practice. Second, the Declaration fails to relate the claims of the challenged patent to the invention that is alleged to be earlier in time.  The Board determined that the Declaration submitted during prosecution of the grandparent against the Hoffberg reference was ineffective because that Declaration relates to claims that were not involved in the IPR proceeding.

Polaris Wireless, Inc. v. Trueposition, Inc., IPR2013-00323, Paper 9 (PTAB Nov. 15, 2013) In an IPR, the burden is on petitioner to show a reasonable likelihood that it would prevail on a ground of unpatentability.  The Board does not presume that challenged claims are entitled to the earlier filing dates of ancestral applications which do not share the same disclosure as the challenged patent.  But, in such circumstances, the issue first has to be raised by petitioner in its petition, by identifying the claims (including their specific limitations) allegedly lacking § 112, first paragraph, written description and enabling disclosure support for the challenged claims in the priority application. Then, patent owner has to make a sufficient showing of entitlement to the earlier filing date, in a manner that is commensurate in scope with the specific points and contentions raised by petitioner.

CBS Interactive Inc. v. Helferich Patent Licensing, LLC, IPR2013-00033, Paper 122 (Mar. 3, 2014) Patent owner submitted a declaration by the inventor to establish that he conceived the subject matter of each challenged claim prior to the critical date of the reference.  To corroborate the testimony, patent owner submitted an undated handwritten specification that allegedly described the claimed invention.  The inventor attempted to corroborate the date of the handwritten specification by testifying that he completed the handwritten specification prior to the critical date.  The Board found such evidence insufficient because there was no independent corroboration.  An inventor’s testimony, standing alone, is insufficient to prove conception, as some form of corroboration is required.  An inventor’s own testimony does not constitute independent corroboration of evidence that stems from the inventor.  The Board also determined that other evidence submitted by patent owner did not demonstrate conception of specific features of the challenged claims prior to the critical date.

Liberty Mutual Insurance Co. v. Progressive Casualty Insurance Co., CBM2013-00004, Paper 53 (PTAB Mar. 13, 2014) The Board determined that patent owner’s claims were not entitled to the filing date of an earlier non-provisional application.  Under 35 U.S.C. § 120, a patent claim is entitled to the benefit of the filing date of an earlier-filed application only if the disclosure of the earlier application provides written description support for the patent claim as required by 35 U.S.C. § 112, ¶ 1. Entitlement to a filing date does not extend to subject matter which is not disclosed but would be obvious over what is expressly disclosed.  It is not sufficient for purposes of the written description requirement of § 112 that the disclosure, when combined with the knowledge in the art, would lead one to speculate as to modifications that the inventor might have envisioned, but failed to disclose.

ABB Inc. v. Roy-G-Biv Corp., IPR2013-00062, Paper 84 (Apr. 11, 2014) Patent owner alleged an earlier date of conception prior to the critical dates of the references, coupled with reasonable diligence until a constructive reduction to practice.  The Board determined that evidence submitted by patent owner to establish an earlier date of invention was insufficient because it was uncorroborated inventor testimony and documents from the inventor.  Corroboration is required for the testimony of the inventor on conception and diligence.  Corroboration evidence must be independent of the inventor.  Independent corroboration may consist of testimony of a witness, other than the inventor, or it may consist of evidence of surrounding facts and circumstances, independent of information received from the inventor.

Focal Therapeutics, Inc. v. Senorx, Inc., IPR2014-00116, Paper 8 (PTAB Apr. 22, 2014) The Board held that if any application in a priority chain fails to meet either (1) the written description requirement under § 112, or (2) the “specific reference” requirement under § 120, the later-filed application is not entitled to the benefit of the filing date of any applications preceding the break in the priority chain.

Corning Inc. v. DSM IP Assets B.V., IPR2013-00053, Paper 66, at 19 (PTAB May 1, 2014) Patent Owner submitted a Declaration Under 37 C.F.R. 1.131 to antedate an asserted reference.  The Declaration was signed by only one of the inventors.  The Board rejected petitioner’s argument that the Declaration must be signed by all the inventors.  The Board clarified two issues with regard to antedating a reference in an IPR. First, though patent owner bears the burden of production in antedating a reference, the burden of persuasion to prove unpatentability of the challenged claims remains with the petitioner.  35 U.S.C. § 316(e). Second, 37 C.F.R. § 1.131 does not control an antedating effort in an IPR. Rule 131 applies “[w]hen any claim of an application or a patent under reexamination is rejected.”
An IPR is neither examination nor reexamination, and no claim has been “rejected.” Further, unlike examination and reexamination, discovery, albeit limited, is an integral part of the proceeding.  Petitioner had an opportunity to cross-examine the declarant.  The Board indicated that it would review the record as a whole and determine the sufficiency of a patent owner’s antedating effort after evaluating all relevant admissible evidence and argument.  The Board determined that patent owner did not sufficiently demonstrate an actual reduction to practice before the asserted reference, primarily because there was no independent corroboration of the evidence, and the evidence failed to demonstrate that the inventors of the challenged claims determined that the invention would work for its intended purpose.

Iron Dome LLC v. E-Watch, Inc., IPR2014-00439, Paper 16 (PTAB Aug. 4, 2014) The Board determined that a Rule 131 Declaration submitted during prosecution of the challenged patent was insufficient to establish a date of invention prior to two references relied upon by petitioner.  The Board indicated that it was not bound by the Examiner’s determination that the Rule 131 Declaration was sufficient to establish an earlier date of invention.  The Board determined that the Declaration was insufficient for two reasons.  First, the Board determined that the Declaration did not demonstrate the continuous exercise of reasonable diligence after conception, noting that there were extended periods of little activity that were not adequately explained.  Second, the Declaration did not establish conception and reduction to practice of the subject matter of each of the challenged claims.

K-40 Electronics, LLC v. Escort, Inc., IPR2013-00203, Paper 45 (PTAB Aug. 27, 2014) The Board determined that patent owner’s evidence was insufficient to swear behind two asserted references.  Patent owner alleged an actual reduction to practice prior to the earliest effective dates of both references.  In order to establish an actual reduction to practice, a party must establish (1) construction of an embodiment or performance of a process that met all the claims limitations, (2) a determination that the invention would work for its intended purpose, and (3) the existence of sufficient evidence to corroborate inventor testimony regarding these events.  The Board determined that two prototypes of the inventor did not meet all the claim limitations, and the prototype evidence did not sufficiently corroborate the inventor’s testimony.  In addition, the Board noted that patent owner did not provide sufficient corroborating testimony by others that witnessed the inventor’s alleged actual reduction to practice which met all the limitations of the claims.  An inventor’s allegations of earlier invention alone are insufficient—an alleged date of invention must be corroborated.

Dynamic Drinkware LLC v. National Graphics, Inc., IPR2013-00131, Paper 42 (PTAB Sep. 12, 2014).  In a final written decision, the Board determined that patent owner successfully demonstrated conception and reduction to practice prior to the filing date of an asserted reference.  At issue was whether patent owner’s reduction to practice as evidenced by a sample product, which was made and tested prior to the filing date of the asserted reference, demonstrated that the sample product meets all the claimed limitations of the invention, and that the inventors determined that the invention worked for its intended purpose.  There is no requirement that the invention, when tested, be in a commercially satisfactory stage of development.  Once the invention has been shown to work for its intended purpose, reduction to practice is complete.  The Board determined that the sample product, as produced and tested, meets all claim limitations and was demonstrated to work for its intended purpose prior to the critical date of the reference.  The fact that patent owner performed additional experiments on the product to improve it for commercialization did not change the earlier date of reduction to practice.

SAP America, Inc. v. Lakshmi Arunachalam, IPR2013-00195, Paper 60 (PTAB Sept. 18, 2014) The Board determined that uncorroborated inventor testimony was insufficient to antedate the reference relied upon by petitioner.  Patent owner attempted to swear behind the reference by submitting a declaration of the inventor.  In addition to lacking corroboration, the Board indicated that the evidence submitted with the declaration did not sufficiently explain how the evidence supports patent owner’s argument of an earlier date of invention.  The Board also found the Declaration insufficient because it did not map the claims of the challenged patent to the information in the Declaration.

Handi Quilter, Inc. v. Bernina Int’l AG, IPR2013-00364, Paper 39 (PTAB Sept. 25, 2014) Patent owner attempted to antedate a relied-upon reference based on a date of conception prior to the critical date of the reference followed by reasonable diligence in reducing the invention to practice.  The Board determined that patent owner’s evidence was insufficient to show prior conception of all the limitations of the claimed invention prior to the critical date of the reference.  Conception is complete only when the idea is so clearly defined in the inventor’s mind that only ordinary skill would be necessary to reduce the invention to practice, without extensive research or experimentation.  In addition, the Board indicated that some of patent owner’s evidence included uncorroborated inventor documents.

Microsoft Corp. v. Surfcast, Inc., IPR2013-00292, Paper 93 (PTAB Oct. 14, 2014) Patent owner sought to antedate an asserted reference with evidence purporting to show an earlier conception coupled with diligence and a subsequent reduction to practice.  To show prior conception, patent owner submitted correspondence between the inventors and declarations by the inventors seeking to corroborate the correspondence.  The Board rejected this evidence, indicating that inventor testimony is not sufficient to authenticate a document offered to corroborate the inventor’s testimony.  Evidence that is authenticated inventor testimony is insufficient to corroborate inventor testimony regarding an alleged date of conception.  To show diligence, patent owner submitted invoices from patent owner’s lawyers and declarations from two interested individuals who were not inventors.  The Board also rejected this evidence, because it was not authenticated by a non-interested person.  Corroboration evidence to show a date of conception must be from an independent, third party.  The Board also determined that the inventors did not show diligence because there were several gaps in activity.

JDS Uniphase Corp. v. Fiber, LLC, IPR2013-00336, Paper 40 (PTAB Dec. 5, 2014) The Board rejected patent owner’s swearing behind evidence that consisted of declaration testimony of a corporate officer of patent owner who claimed to have first-hand knowledge of patent owner’s product development efforts as well as ongoing access and custody to patent owner’s business records.  Patent owner did not offer the testimony of the inventors.  The Board faulted patent owner for not attempting to contact or obtain declarations from any of the inventors, who would have personal knowledge of the conception of the challenged claims.  The Board had to consider what happened in the mind of an inventor, without testimony from any inventor himself.  The Board indicated that the evidence submitted merely showed that the inventors had a general idea or a research plan about aspects of the invention, but the evidence did not show a definite and permanent idea of the complete and operative invention, as to be applied in practice.  In addition, the Board indicated that the evidence did not establish sufficiently that the inventors were diligent in reducing the invention to practice, due to a three-month gap in activity.  Therefore, the Board determined that patent owner did not demonstrate prior conception of the invention coupled with diligence after conception.

Sensio, Inc. v. Select Brands, Inc., IPR2013-00500, Paper 33 (PTAB Feb. 9, 2015) The Board disagreed with patent owner’s argument that it reduced the invention to practice prior to the publication dates of the asserted references.  Patent owner alleged that its inventors communicated the design a production company in China, which in turn produced three prototypes of the invention in succession.   The inventors photographed the prototypes and submitted the photographs as evidence of reduction to practice.  The Board determined that the production company’s prototypes did not inure to patent owner’s benefit because patent owner did not produce corroborated testimony from non-inventors establishing that the inventors conceived of the designs produced by the production company.  Co-inventors cannot corroborate each other’s testimony.  The Board indicated that the evidence of record, including the photographs of the prototypes and business records, did not corroborate the inventors’ testimony regarding conception, because it did not address the claimed design or who conceived of the claimed design.

Neste Oil OYJ v. REG Synthetic Fuels, LLC, IPR2013-00578, Paper 54 (PTAB Mar. 12, 2015).  The Board rejected patent owner’s evidence to swear behind an asserted reference, because patent owner did not provide independent corroboration of the inventor’s testimony and evidence.  Evidence of prior conception requires a showing of independent corroboration, which must be evidence other than the inventor’s testimony.   While the test results produced by patent owner may establish that the inventor manufactured the product prior to the critical date of the reference, the test results themselves do not indicate that any special significance was attached to the results.

Volkswagen Group of America, Inc. v. Emerachem Holdings, Inc., IPR2014-01557, Paper 17 (PTAB May 4, 2015).  The Board authorized patent owner to file a motion to antedate a reference relied upon in the petition.  If patent owner intended to rely on prior conception plus diligence until a reduction to practice, the Board ordered patent owner to provide a diligence chart including a day-by-day account of diligence, and an explanation for any date gap in the diligence showing.

Medtronic, Inc. v. Troy R. Norred, M.D., IPR2014-00110, Paper 46 (PTAB Apr. 23, 2015) The Board was not persuaded by the evidence submitted by patent owner to swear behind an asserted anticipatory reference.  Patent owner submitted a notarized sketch and alleged that the sketch depicted each limitation set forth in several of the challenged claims.  The Board determined that the sketch did not provide sufficient detail to establish possession of an embodiment of the invention having the particular limitations set forth in the claims.  The Board indicated that the sketch was insufficient to describe each element of several challenged claims.  Therefore, patent owner was unable to swear behind the anticipatory reference.

Bioactie Labs. V. BTG Int’l Inc., IPR2015-01305, Paper 19 (PTAB Dec. 15, 2015).  The Board rejected petitioner’s argument that an ancestral application having the same specification as the challenged patent lacked written description and enablement support for the challenged claims.  Petitioner argued that the challenged claims are broader the ancestral application and therefore do not provide 35 U.S.C. § 112 support for the challenged claims.  The Board disagreed, finding that petitioner’s broad claim construction formed the basis for petitioner’s contention.  However, in an IPR, claim terms in an unexpired patent are interpreted according to their broadest reasonable construction in light of the of the specification of the patent in which they appear.  Under a proper construction, the ancestral applications provide § 112 support for the challenged claims.

Oracle Corp. v. Crossroads Systems, Inc., IPR2014-01209, Paper 77 (PTAB Jan. 29, 2016) Patent owner argued that a relied-upon reference was not prior art because the inventor had a prior date of conception plus diligence until a constructive reduction to practice when the parent application was filed.  The Board determined that patent owner’s evidence was insufficient to establish an earlier date of invention due to four months of inactivity during which the inventors worked on another product that was not commensurate in scope with the claims at issue.   The Board also determined that patent owner’s evidence was insufficient to establish diligence in constructively reducing the invention to practice because the inventors made only minimal revisions to a draft patent application over a five-week period.

NHK Seating of America, Inc. v. Lear Corp., IPR2014-01200, Paper 29 (PTAB Feb. 2, 2016) Patent owner argued that the inventor conceived of the subject matter of challenged claims prior to the effective date of a relied-upon reference and thereafter diligently reduced the claimed subject matter to practice.   Patent owner submitted an annotated version of an invention disclosure of the inventor correlating the features of the challenged claims to the components described in the invention disclosure.  The Board noted, however, that patent owner did not provide inventor testimony to support its contention of the correlation between the invention disclosure and the claim features.  The Board therefore determined that the annotated version of the invention disclosure was attorney argument unsupported by the evidence.  In addition, the Board determined that the annotated version of the invention disclosure did not demonstrate conception of every feature recited in the challenged claims.

Dr. Reddy’s Labs., Ltd. v. Galderma Labs., Inc., IPR2015-01778, Paper 11 (PTAB Feb. 16, 2016) The Board rejected patent owner’s argument that the Board lacks authority to determine whether ancestral applications provide written description and enablement support for the challenged claims.  Patent owner argued that petitioner’s attack on the written description support in the priority documents was a thinly-veiled attempt to circumvent 35 U.S.C. § 311(b), which permits inter partes review “only on a ground that could be raised under 35 U.S.C. § 102 or 103.”  The Board indicated that its authority to determine priority entitlement is not limited to situations where the priority documents do not share the same specification with the challenged patent.

Symantec Corp. v. Finjan, Inc., IPR2015-01897, Paper 7 (PTAB Feb. 26, 2016)The Board denied institution because patent owner demonstrated that the challenged patent was entitled to an earlier effective date of a parent application, which incorporated by reference the disclosure of an earlier priority application that patent owner relied upon to demonstrate written support for the cancelled claims.  Material necessary to provide written description support of a claimed invention under 35 U.S.C. § 112, first paragraph, may be incorporated into a patent application by reference, provided that the incorporated reference is a U.S. patent or U.S. patent application publication that does not itself incorporate such “essential material” by reference, by expressing a clear intention to incorporate by reference by using the words “incorporate” and “reference” and clearly identifying the reference patent or application.

Palo Alto Networks, Inc. v. Finjan, Inc., IPR2015-02000, Paper 7 (PTAB Mar. 23, 2016) The Board denied institution because the relied-upon references were determined to not be prior art against the challenged patent.  The Board agreed with patent owner that a grandparent application, despite not mentioning the precise terms used in the challenged claims, provides written description and enablement support for the features of the challenged claims.

LG Elecs., Inc. v. ATI Techs. ULC, IPR2015-00325, Paper 62 (PTAB Apr. 14, 2016) The Board determined that patent owner could not disqualify three asserted references as prior art because patent owner did not demonstrate an actual reduction to practice of the invention prior to the effective dates of those references.  There cannot be an actual reduction to practice without a physical embodiment which includes all limitations of the claim.  Every limitation of the claim must exist in the embodiment and be shown to have performed as intended.  An equivalent of a physical embodiment does not satisfy the requirement of an actual reduction to practice.  There can be no actual reduction to practice if the constructed embodiment lacks an element recited in the claims or uses an equivalent of that element.  The claimed invention is directed to a graphics processing system.  A circuit design, by itself, is not a physical hardware element, let alone a graphics processing system.  Therefore, a circuit design is insufficient to show an actual reduction to practice of the claimed invention.  Computer testing of software code of an embodiment that was never reduced to a physical embodiment does not serve as an actual reduction to practice.  The Board also determined that, even if the software testing was considered a physical embodiment, the inventors did not exercise reasonable diligence to reduce the invention to practice, because the evidence did not establish that engineers of the company were diligently working on the features of the claimed invention during the critical time period.

Coalition for Affordable Drugs V LLC v. Biogen MA Inc., IPR2015-01993, Paper 34 (PTAB Apr. 19, 2016) The Board authorized patent owner to file a motion to antedate an asserted reference with its patent owner response.  Patent owner, as movant and/or proponent of an earlier date of invention, has the burden to show entitlement to a date of invention earlier than the asserted reference. To the extent that patent owner relies on diligence after conception, patent owner shall present a diligence chart in the form of an exhibit. Any diligence chart must (i) list all days from the beginning of diligence through the end of diligence, (ii) briefly state what happened on each day, and (iii) cite the page and line of the motion on which the listed day is discussed. Every date gap in the diligence showing must be explained. The fact that there is a gap does not per se establish lack of reasonable diligence, and the fact that there is no gap does not per se establish reasonable diligence.

Wright Medical Tech, Inc. v. Biomedical Enters., Inc., IPR2015-00786, Paper 38 (PTAB May 4, 2016) The Board determined that the challenged claims are not unpatentable because patent owner established an earlier date of conception and reduction to practice prior to an asserted reference.  Patent owner provided sufficient evidence, including the date on which claimed invention was reduced to practice, to persuade the Board that patent owner was entitled to an earlier date of invention.  Petitioner did not rebut the reduction to practice evidence, or challenge whether the reduction to practice includes all the features of the challenged claims.  Noting that petitioner has the burden of persuasion to establish that the asserted reference qualifies as prior art against the patent, the Board determined that petitioner did not demonstrate that the claims are unpatentable.

Daiichi Sankyo Co., Ltd. v. Alethia Biotherapeutics, Inc., IPR2015-00291, Paper 75 (PTAB June 14, 2016).  The Board determined that the challenged patent was not entitled to the priority date of an earlier application because the earlier application did not have written description and enabling support for features of the challenged claims.  The Board determined that the development of antibodies would have required undue experimentation based on the disclosure of the application.  The Board indicated that the disclosure of a single species was insufficient to describe a genus of the claimed antibodies.  In addition, the Board determined that patent owner did not establish an earlier date of invention through an earlier date of conception and diligence until constructive reduction to practice.  The Board indicated that the evidence did not support patent owner’s contention that the invention of the challenged claims was conceived prior to the date of the reference, because patent owner had not shown that it conceived the claimed antibodies, and patent owner was still conducting trial and experimentation, demonstrating a lack of conception.

Fitbit, Inc. v. Bodymedia, Inc., IPR2016-00707, Paper 9 (PTAB Sept. 8, 2016) The Board denied institution for obviousness challenges because the petitioner did not establish that the asserted references qualify as prior art against the challenged patent.  Petitioner alleged that the sole independent claim was not supported by the priority date of the earliest filed applications, because the earlier applications did not contain an equivalent description of features in the claim.  Petitioner and its declarant focused on whether the parent application provided “equivalent description” as a search for literal terms without any discussion of what the disclosure conveys as a whole, or in part, to a person of skill in the art.  Petitioner’s analysis and argument ignored the claims as originally filed in the earlier applications, thus overlooking additional disclosure in the earlier applications.  The Board indicated that petitioner did not set forth sufficient argument or evidence regarding the existing knowledge in the particular field of the patent claims, and did not examine the scope and content of the parent application disclosures from the perspective of a person of ordinary skill in the art.

Real Parties-in-Interest (RPI) and Privity

35 U.S.C. §§ 312(a)(2) and 322(a)(2) provide that IPR, CBM and PGR petitions may be considered only if all real parties-in-interest are identified in the petition.  The Trial Practice Guide provides that “[w]hether a party who is not a named participant in a given proceeding nonetheless constitutes a ‘real party-in-interest’ or ‘privy’ to that proceeding is a highly fact-dependent question.”  77 Fed. Reg. 48759 (Aug. 14, 2012).

RPX Corp. v. VirnetX Inc., IPR2014-00171, Paper 49 (PTAB June 5, 2014).  RPX Corp. identified itself as the only RPI. Apple Inc. had previously filed IPR petitions that were determined to be time-barred.   Apple paid RPX $500K to file the IPR petitions.  Apple was a client of RPX.  Due to Apple’s involvement and funding, the Board determined that Apple was a proxy of RPX, and therefore, RPX was time-barred because its proxy was time-barred.   The Board determined that petitioner was, “at most, a ‘nominal plaintiff’ with ‘no substantial interest’ in [the inter partes review] apart from those of its client,” who was determined to be an RPI.

Zoll Lifecor Corp. v. Philips Elecs. N. Am. Corp., IPR2013-00606, Paper 13 (PTAB Mar. 20, 2014) The Board denied institution on the basis that petitioner, Zoll Lifecor, should have named its parent, Zoll Medical, as an RPI.  The Board indicated that Zoll Medical was time barred under 35 U.S.C. § 315(b).  The Board determined that Zoll Medical exercised consistent control over petitioner for over six years, including control of the IPR.  The Board held that “[t]he non-party’s participation may be overt or covert, and the evidence may be direct or circumstantial—but the evidence as a whole must show that the non-party possessed effective control from a practical standpoint.”  In addition, the Board indicated that while common counsel alone is not dispositive of control, petitioner’s actions have blurred the lines of corporate separation with Zoll Medical such that Zoll Medical has had control, or could have controlled petitioner, in all aspects of its business.

GEA Process Eng’g, Inc. v. Steuben Foods, Inc., IPR2014-00041, Paper 140 (PTAB Dec. 23, 2014) The Board terminated the proceeding under 35 U.S.C. § 312(a)(2) on the basis that petitioner did not name all RPIs.  The Board determined that petitioner should have named its co-defendant in the related district court litigation as an RPI in the proceeding, because the co-defendant paid funds toward the preparation of the petition.  Petitioner and the co-defendant entered into an agreement to jointly defeat the patent in the district court litigation, and to share the costs in invalidating the patent.  The district court litigation and IPR expenses were jointly billed by petitioner’s counsel.  The Board determined that since the co-defendant contributed to funds that were used to pay for the preparation of the petition, the co-defendant was an RPI.   The Board reasoned that since the co-defendant funded part of the IPR funds, the co-defendant had an opportunity to control the proceeding.   

Aruze Gaming Macau, Ltd. v. MGT Gaming, Inc., IPR2014-01288, Paper 13 (PTAB Feb. 20, 2015) RPI is the relationship between a party and a proceeding, and does not describe the relationship between the parties.  The relevant inquiry is the degree of control a nonparty can exert over an inter partes review proceeding, not over the petitioner.  In determining whether a nonparty is an RPI to a proceeding before the Board, the inquiry is whether someone other than the named petitioner is “litigating through a proxy.”  In other words, if a nonparty can influence a petitioner’s actions in a proceeding before the Board, to the degree that would be expected from a formal co-petitioner, that nonparty should be considered an RPI to the proceeding.  In contrast to the RPI inquiry, which focuses on a party’s relationship to a proceeding, the privity inquiry focuses on the relationship between the parties.  In the context of § 315(b), the goal of the preclusion is to prevent successive challenges to a patent by those who previously have had the opportunity to make such challenges in prior litigation.  The Board’s focus of the privity inquiry is on the relationship between the parties during the prior lawsuit. The Board determines whether the named petitioner and the prior litigant’s relationship, as it relates to the prior lawsuit, is sufficiently close such that the petitioner could have had a full and fair opportunity to litigate the validity of the patent in the lawsuit.

JP Morgan Chase & Co v. Maxim Integrated Prod., Inc., CBM2014-00179, Paper 11 (PTAB Feb. 20, 2015) The Board held that a substantial resubmission of a petition filed in an earlier proceeding was not a sufficient basis, by itself, for determining that a co-petitioner in the earlier proceeding was a RPI in a later proceeding.

Zerto, Inc. v. EMC Corp., IPR2014-01254, Paper 35 (PTAB Mar. 3, 2015). The Board denied institution on the basis that petitioner did not identify all RPIs.  The Board determined that petitioner should have named its parent company as an RPI because the parent company had an opportunity to control the proceeding due to shared corporate leadership.  The Board reasoned that it is unclear whether petitioner and its parent operate as separate and distinct entities, or whether they operate as a single entity.  The Board indicated that a petition is presumed to accurately identify all RPIs.  When patent owner provides sufficient evidence prior to institution that reasonably brings into question the accuracy of petitioner’s RPI identification, the overall burden remains with petitioner to demonstrate that it has complied with the statutory requirement to identify all RPIs.  An indemnification clause, by itself, is not dispositive with respect to whether the indemnitor exercises or could exercise control over an IPR proceeding.  

VMware, Inc. v. Good Technology Software Inc., IPR2015-00027, Paper 11 (PTAB Mar. 6, 2015). The Board denied institution on the basis that petitioner was time-barred under § 315(b) because it acquired AirWatch LLC, which was served with a complaint for infringement more than one year prior to the filing date of the petition. AirWatch was served approximately two years before the petition was filed. Petitioner acquired AirWatch approximately eight months before the petition was filed. Petitioner argued it should not be barred because it was not in privity with AirWatch at the time AirWatch was sued. The Board disagreed, finding privity under § 315(b) is not determined only at the time of service. Because AirWatch, a privy of petitioner, was served more than a year before the petition was filed, petitioner was barred.

Askeladden LLC v. McGhie, IPR2015- 00122, Paper 30 (PTAB Mar. 6, 2015) After consideration of patent owner’s preliminary response and petitioner’s authorized reply, the Board determined that petitioner should have named its parent as an RPI.  The parent entity is a banking industry group representing numerous financial institutions.  The parent entity formed petitioner to implement an initiative developed by the parent for challenging patents that affect the financial services industry.  Pursuant to 37 C.F.R. 42.106(b), the Board vacated the previously-accorded filing date of the petition and provided petitioner an opportunity to correct the petition.  Responsive to the Board’s order, petitioner filed an updated mandatory notice adding its parent as an RPI, and the petition was accorded a filing date as of the date the updated mandatory notice was filed.  There was no time bar under 35 U.S.C. § 315(b).

Sony Computer Entm’t America LLC v. Game Controller Tech. LLC, IPR2013-00634, Paper 31 (PTAB Apr. 2, 2015).  The Board denied patent owner’s motion to terminate for an alleged failure to name all RPIs.  The Board denied the motion as being untimely and on the merits.  Patent owner was found to be on notice of the relevant facts before the petition was filed.  Patent owner did not challenge the RPI identification in its preliminary response.   Rather, patent owner waited until six weeks before the Board was required to issue its final decision.  Additionally, petitioner would have been time barred had the motion been granted at this late stage of the proceeding. The Board indicated that granting patent owner’s motion at such a late stage would encourage patent owners to delay presenting RPI challenges until after all the merits in the review had been briefed and argued.  The Board’s rules require the opposite behavior to secure the just, speedy, and inexpensive resolution of every proceeding.

Nissan N. Am., Inc. v. Diamond Coating Techs., LLC, IPR2014-01546, Paper 10 (PTAB Apr. 21, 2015).  The Board rejected patent owner’s argument that institution should be denied on the basis that petitioner did not name all RPIs.  The Board determined that the existence of an indemnification agreement was not sufficient to establish that the unnamed parties were real parties-in-interest to the inter partes review proceeding.  The Board held that “[t]he mere existence of an indemnification agreement does not establish that the indemnitor has the opportunity to control an inter partes review.”

Reflectix, Inc. v. Promethean Insulation Tech. LLC, IPR2015-00039, Paper 18 (PTAB Apr. 24, 2015) The Board denied institution on the basis that petitioner did not identify all RPIs.  The Board determined that petitioner’s parent company should have been named as an RPI on the basis of shared corporate leadership which had directed the filing of the IPR petition.  The Board noted that the central determination as to whether a party is an RPI is whether “a party other than the named petitioner was controlling, or capable of controlling, the proceeding before the Board.”  The Board indicated that “[w]hile complete control is not required, ‘if a nonparty can influence a petitioner’s actions in a proceeding before the Board, to the degree that would be expected from a formal copetitioner, that nonparty should be considered a [RPI] to the proceeding.’” (quoting Aruze Gaming, IPR2014-01288, Paper 13 at 12 (PTAB Feb. 20, 2015).  The Board denied petitioner’s request to amend the RPI identification, holding that petitioner did not show good cause exists to justify an alteration in the RPI identification.  The Board indicated that petitioner misunderstood the law as it applies to the RPI determination.  The Board also noted that petitioner did not ask to amend the RPI identification until after patent owner raised the issue.

Jiawei Tech. (HK) Ltd. v. Simon Nicholas Richmond, IPR2014-00935, Paper 52 (PTAB Aug. 21, 2015).  The Board denied patent owner’s motion to terminate the proceeding, determining that petitioner named all RPIs.  The Board rejected patent owner’s argument that one of petitioner’s parent entities should have been named as an RPI.  Petitioner (Coleman) was served with a complaint for infringement of the patent, not its parent.  Therefore, the Board reasoned that petitioner, not its parent, desires review of the patent.  Neither corporate control nor mutual interest in invalidity, alone, is sufficient to deem a non-party an RPI.  The Board also noted that petitioner, not its parent, funded the proceeding.  The fact that the parent entity was identified on the checks “just indicated where the administrative unit that processed the payments was physically located.”  Further, the Board noted that patent owner only produced evidence of theoretical control, but did not provide sufficient evidence that the parent entity had any actual control over petitioner’s participation in the proceeding.  In addition, the Board indicated that although petitioner and its parent share the same officers, patent owner did not provide evidence showing that the officers had the ability to, or in fact did, blur the lines between their respective roles in the organizations.   The Board also held that compliance with 35 U.S.C. § 312(a)(2) is judged at the time the petition is filed. 

Caterpillar, Inc. v. Esco Corp., IPR2015-01032, Paper 12 (PTAB Oct. 15, 2015) Petitioner identified itself as the only RPI in the proceeding.  In the preliminary response, patent owner argued that the petition was defective because it failed to identify Raptor and Caterpillar Global Mining, Inc. (“CGM”) as additional RPIs.  Raptor and CGM were co-defendants with petitioner in the related litigation, and CGM is a wholly owned subsidiary of petitioner.  The Board indicated that this corporate relationship suggests that petitioner controls CGM, but it does not suggest that CGM controls petitioner.  The Board also indicated that patent owner did not provide any evidence that CGM controls petitioner in the IPR proceeding.  The Board therefore determined that CGM is not an RPI.  Patent owner argued that Raptor, as the seller to petitioner of the products accused of infringement in the related litigation, bears responsibility as the indemnitor for petitioner.  The Board determined that such an indemnitor relationship, by itself, is not sufficient to demonstrate that Raptor funded or controlled petitioner in the IPR proceeding.  At most, patent owner has shown that Raptor and CGM are joint defendants with petitioner in the related litigation, which is not enough to demonstrate that Raptor and CGM were RPIs in the IPR proceeding.

Par Pharmaceutical, Inc. v. Horizon Therapeutics, Inc., IPR2015-01117, Paper 13 (PTAB Nov. 4, 2015). The Board determined that petitioner’s parent company was not an RPI because the evidence presented did not show actual control of the IPR proceeding by the parent company.  Petitioner’s parent company develops, manufactures and distributes generic pharmaceutical products, shares corporate leadership with petitioner, asserted, in a SEC filing, that “we” (parent company and petitioner) filed the IPR petition challenging the patent, and controlled petitioner’s activities in an unrelated litigation.  The Board indicated that this evidence did not establish adequately that the parent company had control over the IPR proceeding.

Cox Communications, Inc. v. AT&T Intellectual Property I, L.P., IPR2015-01227, Paper 13 (Nov. 19, 2015) Patent owner asserted its patent against petitioner and its regional subsidiaries in the related district court litigation.  Petitioner did not name any of the regional subsidiaries as RPIs in the petition.  In its preliminary response, patent owner argued that the petition should be denied because petitioner did not name its regional subsidiaries and another wholly-owned subsidiary as RPIs.  Patent owner argued that petitioner is a holding company and that the regional subs are accused of infringing the challenged patent, so petitioner filed the petition as a surrogate for the regional subsidiaries.  The Board disagreed with this argument, finding that patent owner did not demonstrate that how the regional subsidiaries controlled, directed, or funded petitioner’s participation in the IPR proceeding.  At most, patent owner has shown that petitioner and its regional subsidiaries are joint defendants in the related district court case and therefore shared a common interest in rendering the challenged claims unpatentable. This common interest, however, is not enough to demonstrate that petitioner’s regional subsidiaries should have been identified as RPIs in the petition.

Elekta, Inc. v. Varian Medical System, Inc., IPR2015-01401, Paper 19 (PTAB Dec. 31, 2015) The Board permitted petitioner to amend the identification of RPIs as set forth in the petition and maintain the original filing date accorded to the petition.  The Board indicated that “35 U.S.C. § 312(a)(2) does not define our jurisdiction with respect to inter partes review proceedings.”  In addition, the Board indicated that § 312(a)’s emphatic “may be considered only if” language does not make its requirements jurisdictional.  Because Congress has not clearly stated that it is jurisdictional, the Board treated § 312(a) as non-jurisdictional in character.  The Board stated that “[o]ur governing statutes, including § 312(a), leave the Board with discretion to permit correcting defects in a petition without changing the filing date.”

TradeStation Group, Inc. v. Trading Technologies Int’l, Inc., CBM2015-00161, Paper 29 (PTAB Jan. 27, 2016)The Board disagreed with patent owner’s arguments that an unnamed party, which is petitioner’s co-defendant in the related litigation, should have been named as an RPI simply because the petition and supporting exhibits are substantially identical to the documents filed in the co-defendant’s petition and supporting exhibits submitted against the same patent.  The fact that petitioner admitted that it substantially copied the unnamed party’s petition and exhibit did not establish sufficiently that the unnamed party had control over the filing of the petition in the IPR proceeding.

Zero Gravity Inside, Inc. v. Footbalance System Oy, IPR2015-01769, Paper 17 (PTAB Feb. 12, 2016) The Board held that merely being an executive or board member of petitioner does not establish sufficiently that the executor or board member, in his or her individual capacity, exercises control or has an opportunity to exercise control of the IPR proceeding, as opposed to in his or her capacity as an executive or board member of petitioner.

Lumentum Holdings, Inc. v. Capella Photonics, Inc., IPR2015-00731, Paper 39 (PTAB Mar. 2, 2016) (precedential). The Board denied patent owner’s motion to terminate for failure to name all RPIs.  In doing so, the Board rejected patent owner’s argument that the Board lacked jurisdiction to consider the petition.  The Board adopted the rationale set forth in Elekta that 35 U.S.C. § 312(a) does not define the Board’s jurisdiction to consider a petition.  Rather, § 312(a) sets forth requirements that must be satisfied for the Board to give consideration to a petition, but a lapse in compliance with those requirements does not deprive the Board of jurisdiction over the proceeding, or preclude the Board from permitting such lapse to be rectified.

Coalition for Affordable Drugs VIII, LLC v. The Trustees of the Univ. of Pennsylvania, IPR2015-01835, Paper 7 (PTAB Mar. 7, 2016) The Board held that the fact that petitioner named other subsidiary organizations as RPIs in one proceeding is not sufficient, by itself, to demonstrate that those subsidiary organizations should have been named as RPIs in the instant proceeding.

Petroleum Geo-Services Inc. v. Westerngeco LLC, IPR2014-00688, Paper 106 (PTAB Mar. 17, 2016) The Board held that a request for rehearing is not the appropriate avenue to submit new evidence to challenge petitioner’s RPI identification.  Petitioner filed a petition against a related patent one week after the final written decision in the current proceeding.  In the later petition, petitioner identified a third party as an RPI that was not identified as an RPI in the instant proceeding.  The final decision had been entered and the record was closed in this IPR proceeding.  The Board declined to consider whether such an “admission” would necessarily require a finding that the newly named RPI in the other proceeding should have been identified as an RPI in the instant proceeding.  The Board indicated that it was too late to introduce this evidence to support the argument after the final written decision was entered.

Mexichem Amanco Holdings S.A. de C.V. v. Honeywell Int’l, Inc., IPR2015-01309, Paper 25 (PTAB Apr. 7, 2016) The Board denied patent owner’s motion to terminate the proceeding and granted patent owner’s alternative motion to reset the filing date of the petition to the date on which petitioner filed an updated mandatory notice naming five additional RPIs.  There was no indication of any intentional concealment or any other bad faith in petitioner’s actions regarding its RPI identification in this proceeding. “Petitioner maintains that it named all RPIs in the Petition, and states that it added five additional RPIs, out of an abundance of caution, after Patent Owner raised the issue. There is no indication of a material advantage being afforded to Petitioner as a result of adding RPIs at this stage, or a material disadvantage to Patent Owner.” The Board also noted that no bar to institution under 35 U.S.C. § 315 applies to the proceeding. The Board exercised its discretion under 35 U.S.C. § 316 and 37 C.F.R. §§ 42.5 and 42.71 to reset the filing date of the petition. The Board accorded the petition a filing date on the date that petitioner filed its updated mandatory notices.

Hughes Network Sys. v. Calif. Inst. of Tech., IPR2015-00059, Paper 42 (PTAB April 21, 2016). The Board held that, although petitioner has the ultimate burden of persuasion in an IPR, once petitioner has represented what it believes to be a proper identification of the RPI(s), patent owner has the burden of production in establishing that a real party-in-interest has not been named.

Enovate Medical, LLC v. InterMetro Industries Corp., IPR2015-00300, Paper 54 (PTAB May 11, 2016). The Board denied patent owner’s motion to terminate for failure to name all RPIs. Patent owner alleged that petitioner’s parent company should have been named as an RPI because of shared corporate leadership and the parent company’s alleged involvement in petitioner’s business operations. The Board noted that it was petitioner alone who stood accused of infringement in the related lawsuit.   Patent owner has not shown that the parent company had a legal, and not merely a financial interest, in the IPR proceeding. As noted in the Trial Practice Guide, the RPI is the party that desires review of the patent. Here, it is petitioner who, having been sued for infringement, desires review of the patent.

Unified Patent Inc. v. Am. Vehicular Scis., LLC, IPR2016-00364, Paper 13 (PTAB June 27, 2016). The Board rejected patent owner’s argument that institution should be denied for failure to identify all RPIs.  Patent owner alleged that petitioner was paid by its members to challenge patents, and that all funding for its IPR activity came directly from its members.  The Board concluded that the mere fact that members provide payment to petitioner for a subscription to petitioner’s services is insufficient to show that these members are funding this particular IPR. The evidence did not show an obligation on petitioner’s part to file IPR proceedings on behalf of any member in return for payment, nor did it show that petitioner’s members had any control over when and how petitioner spent the revenue received from its members.  Instead, the evidence showed that petitioner made all decisions regarding any IPR proceeding without input from its members, and that petitioner alone bore all costs of any such proceeding.

Aerospace Comms. Holdings Co., Ltd. v. The Armor All/Step Prods. Co., IPR2016-00441, Paper 12 (PTAB June 28, 2016). The Board authorized petitioner to file an updated mandatory notice to add new RPIs while maintaining the filing date accorded to the petition. Citing Lumentum, the Board indicated that a lack of compliance with § 312(a)(2) does not preclude the Board from permitting the lapse to be rectified if there was no intentional concealment or other bad faith in not initially naming the additional RPIs. The Board rejected patent owner’s assertion that it would be prejudiced by the addition of RPIs, indicating that the addition of new RPIs does not alter the underlying prior art grounds on which the claims are challenged. By naming the additional RPIs, petitioner is subjecting additional parties to the estoppel provisions that apply to RPIs, which is a meaningful consequence that benefits patent owner. Noting that a § 315(b) time bar did not apply, the Board indicated that requiring petitioner to re-file its petition would delay and add expense to the proceedings for both the parties and the Board. While acknowledging patent owner’s concerns that allowing amendment of the RPI identification may encourage gamesmanship, the Board indicated that petitioner’s late action is excused on a showing of good cause and would be in the interests of justice.

1964 Ears, LLC v. Jerry Harvey Audio Holding, LLC, IPR2016-00494, Paper 21 (PTAB July 21, 2016). The Board rejected patent owner’s argument that the petition should be denied for a failure to identify two related parties, the named owner of petitioner and another company, as RPIs.  Patent owner argued that petitioner should have identified its owner as an RPI because he is the “Governing Person” of petitioner, and has exclusive control over the actions taken by petitioner. The Board disagreed.  Petitioner is a limited liability company that lacks a corporeal body, and can therefore only act through the actions of its agents and managers.  It is only when a closely held LLC fails to elect its classification for tax purposes that the IRS disregards the entity as separate from its owner.  Patent owner provides no evidence in this regard.  With respect to the other company, the Board indicated that although the evidence cited by patent owner evinces some blurring between the corporate identifies of petitioner and the other company, the evidence fails to show that the other company controlled or had the opportunity to control petitioner’s actions in filing the petition—a central question to be resolved in finding a non-named party should have been named an RPI.

Petroleum Geo-Services Inc. v. WesternGeco LLC, IPR2014-01478, Paper 72 (PTAB July 11, 2016). The Board rejected patent owner’s argument that the petition should have been denied based on petitioner’s alleged failure to name all RPIs. Patent owner argued that petitioner and another company who was also sued by patent owner are privies, and that petitioner was time-barred because the other company was served with a complaint several years before the petition was filed.  Patent owner argued that petitioner is a privy of the other company because petitioner asked the company to develop, and now purchases, the allegedly infringing product from the other company under a contractual agreement.  The Board indicated that the weight of this evidence bears more heavily towards a finding that the relationship was contractual, a fairly conventional purchaser-manufacturer relationship, with discussions and communications undertaken generally at arms-length. The Board indicated that patent owner did not provide a sufficient factual basis upon which to conclude that petitioner and the other company are privies.   Further, the nature of shared interests in invalidating the patent, undertaking a joint defense and assertion of a common interest privilege does not, without more, indicate privity between petitioner and the other company. The Board determined that patent owner did not demonstrate that the other party controlled, or had the opportunity to control, petitioner’s involvement in the IPR proceeding. The Board also indicated that an indemnification agreement does not establish that the other company had an opportunity to control petitioner in the IPR.

Dr. Reddy’s Labs., Ltd. v. Invidior UK Ltd., IPR2016-01113, Paper 8 (PTAB Aug. 4, 2016). The Board authorized patent owner to file a motion for additional discovery to request documents related to whether petitioner named all RPIs. Patent owner believed that a third party may be a RPI and is in privity with petitioner based on a press announcement of an agreement between petitioner and the third party as well as a related notice by the Federal Trade Commission. Patent owner argued that the agreement with the third party covered the drug at issued in the related district court litigation between petitioner and patent owner.

Dynamic Air Inc. v. M-I Drilling Fluids UK Ltd., IPR2016-00256, Paper 28 (PTAB Aug. 19, 2016). The Board denied patent owner’s motion to terminate the proceeding for an alleged failure to name all RPIs. Patent owner alleged that a subsidiary of petitioner had an opportunity to exercise control over the IPR proceeding. Patent owner argued that the subsidiary would benefit more than petitioner from invalidation of the patent. The Board indicated that “[e]ven if true, this suggests at most that [the subsidiary] has a reason to want to control Petitioner, but such a reason is not evidence of control or the opportunity to control.” The Board held that the evidence as a whole did not establish that the subsidiary effectively controlled petitioner with regard to the proceeding. Petitioner benefits from the proceedings because it expresses a desire to market equipment in the U.S., while the subsidiary does not. The evidence does not demonstrate that petitioner acted as proxy for its subsidiary nor as a nominal plaintiff.

Interactive Brokers LLC v. Chart Trading Development, LLC, CBM2016-00038, Paper 14 (PTAB Aug. 23, 2016). One of the core functions of the RPI and privies requirement is “to assure proper application of the statutory estoppel provisions, i.e., to protect patent owners from harassment via successive petitions by the same or related parties and to prevent parties from having a second bite at the apple.” The burden of proof is on patent owner to show that an un-named party is an RPI.  The Board addresses this highly fact dependent question on a case by case basis. The evidence in this proceeding did not demonstrate that the relationship between petitioner and the customer-defendants was sufficiently close such that, in the absence of their voluntary estoppel stipulation in the district court, both petitioner and the customer-defendants should be bound by the trial outcome and associated estoppels.

CaptionCall, L.L.C. v. Ultratec, Inc., IPR2015-00636, Paper 99 (PTAB Sept. 8, 2016). The Board denied patent owner’s motion to dismiss for failure to name all RPIs. Patent owner alleged that petitioner’s parent company should have been identified as an RPI. The Board indicated that patent owner’s evidence, taken as a whole, was insufficient to establish, by a preponderance of the evidence, that petitioner’s parent company is a RPI to this proceeding. Patent Owner’s evidence demonstrates a relationship between petitioner and its parent, which is not sufficient to demonstrate a relationship between the parent company and this proceeding.  Patent owner’s evidence points to proceedings that are not at issue.  Having determined patent owner has not met its burden to establish the parent company is a RPI to this proceeding, the Board indicated that it did not need to decide whether patent owner’s motion is timely.

CGQ, Inc. v. Chart Trading Development, LLC, CBM2016-00048, Paper 12 (PTAB Sept. 12, 2016) In an institution decision, the Board rejected patent owner’s argument that the petition should be denied for a failure to name all RPIs.  The Board indicated that it was not persuaded that patent owner’s evidence reasonably establishes or brings into question that the customer defendants in the related district court litigation are RPIs in the CBM proceeding.  “[S]tatus as a co-defendant of a joint defense group is insufficient to establish that the customer defendants had the required control over the filing of the Petition in this proceeding.”  The Board indicated that patent owner did not present persuasive evidence that the customer defendants have any influence or control over petitioner’s actions in the CBM proceeding.  The mere fact that they are customers of petitioner and share a common litigation counsel does not elevate them to RPIs in the CBM proceeding.

Atlanta Gas Light Co. v. Bennett Regulator Guards, Inc., IPR2015-00826, Paper 32 (PTAB Sept. 20, 2016)The Board denied patent owner’s request to file a motion to terminate the proceeding for petitioner not identifying all RPIs.  After the oral hearing and before the final written decision, petitioner’s parent, which was identified as an RPI in the petition, merged with another entity.  Petitioner did not submit an updated mandatory notice to identify the new entity with which its parent merged.  Citing the Lumentum decision, the Board indicated that petitioner’s failure to submit an updated mandatory disclosure did not deprive the Board of jurisdiction.  The Board ordered petitioner to file an updated mandatory notice with current RPI information, and authorized patent owner to file a motion for sanctions in support of its allegation that petitioner failed to comply with its requirement to file updated mandatory notice information.

Redundant Ground

Under 35 U.S.C. § 314(a) and 37 C.F.R. § 42.108(a), the Board has the discretion to institute inter partes review on all or some of the challenged claims and on all or some of the asserted grounds of unpatentability.  The Board has similar discretion under 35 U.S.C. § 324(a) and 37 C.F.R. § 42.208(a) for CBMs and PGRs.  The Board may deny institution for grounds of challenge that are deemed to be “redundant” to other grounds of challenge presented in a petition.

Great West Casualty Co. v. Transpacific IP I Ltd., IPR2015-01912, Paper 10 (Mar. 22, 2016) In a decision to institute, the Board rejected patent owner’s argument that the Board should not institute several allegedly redundant grounds. The Board was not persuaded that an asserted obviousness ground based on the patent should not be maintained alongside the anticipation ground based on the patent. Petitioner has made a sufficient threshold showing on both grounds. Further, petitioner provides distinct reasoning and expert testimony to support the ground based on obviousness. Petitioner also identifies what patent owner may or may not argue are shortcomings in the patent’s disclosure, and thereafter provides two additional references directed at those areas. The Board determined that the use of the two additional references was rational, narrowly targeted, and not burdensome considering only five claims with very similar limitations are at issue in the proceeding.

Alarm.com Inc. v. Vivint, Inc., IPR2015-01965, Paper 12 (PTAB Mar. 30, 2016) The Board partly granted institution of inter partes review of a patent under 35 U.S.C. §§ 102(b) and 103(a). Petitioner argues that the grounds asserted in the instant Petition are not cumulative with respect to the grounds asserted in the co-pending petition filed in IPR2015- 01967, but Petitioner makes no such arguments regarding the various grounds asserted in the instant Petition. The Board indicated that it has “broad discretion to institute an inter partes review as to some asserted grounds and not others….[W]e may elect not to institute on grounds that have not been shown to be necessary to address the challenged claims or to be superior to other grounds.” In view of its statutory and regulatory mandates, the Board’s determination to institute inter partes review of all challenged claims on at least one ground, and in the absence of persuasive argument by petitioner as to why the Board should also institute review on the alternative grounds, the Board exercised its discretion and did not institute inter partes review as to the alternative grounds asserted by petitioner.

Old Republic Gen. Ins. Grp., Inc. v. Intellectual Ventures I LLC, IPR2015-01956, Paper 20 (PTAB Apr. 18, 2016) The Board partly granted institution of inter partes review. Pursuant to its discretion under 35 U.S.C. § 315(d), the Board declined to institute on three grounds. The Board indicated that petitioner did not “explain adequately why one set of grounds is preferred over the other.” Petitioner “does not explain the weaknesses or strengths of one ground over the other, or express a preference for either ground.” The Board indicated that it has “broad discretion to institute an inter partes review as to some asserted grounds and not others…. Accordingly, pursuant to our authority under 35 U.S.C. § 315(d) to manage inter partes proceedings with the objective of ‘secur[ing] the just, speedy, and inexpensive resolution of every proceeding,’ we decline to institute trial on these remaining grounds.”

Hughes Network Sys., LLC v. Calif. Inst. Of Tech., IPR2015-00059, Paper 42 (PTAB Apr. 21, 2016) The Board rejected patent owner’s argument that the petition failed to name parent and affiliated entities as RPIs. Petitioner identified its ultimate parent entity under the heading “Real Party-in-interest” in the petition, which identification is in accordance with the PTO’s published guidance of August 12, 2004. The Board determined that there is no new evidence showing that the ultimate parent controls the IPR proceeding, and that petitioner named its ultimate parent in accordance with the prior published guidance.   As such, petitioner has not failed to name its ultimate parent as an RPI. Patent owner has failed to show that the petition was filed at the behest of the affiliated entity. The key to a RPI inquiry is the relationship between the potential unnamed RPI and the proceeding, not the relationship between parties. There is no persuasive evidence of record that the affiliated entity controls or even had an opportunity to control petitioner’s decision to file or maintain this inter partes review.

Rehearing

Under 37 C.F.R. § 42.71(d), a party dissatisfied with a decision may file a single request for rehearing of the decision, without prior authorization of the Board.  The burden of showing a decision should be modified lies with the party challenging the decision.

Veeam Software Corp. v. Symantec Corp., IPR2013-00142, Paper 17 (PTAB Sept. 30, 2013) The Board altered its decision instituting an anticipation challenge for four claims. The Board agreed that it had overlooked patent owner’s argument in its preliminary response that the asserted reference did not disclose a limitation of the claims.

Microsoft Corp. v. Virnetx Inc., IPR2014-00614, Paper 12 (PTAB Oct. 30, 2014) The Board altered its institution decision to include review of two claims that the Board had omitted from its institution decision due to a “transcription error.”

Marvell Semiconductor, Inc. v. Intellectual Ventures I LLC, IPR2014-00553, Paper 19 (PTAB Feb. 20, 2015).   The Board instituted trial after previously denying institution for grounds of challenge which were deemed to be redundant with other grounds in another proceeding.  After institution in the other proceeding, patent owner alleged that an asserted reference was not prior art under 35 U.S.C. § 103(c)(1).  The Board agreed that it was appropriate to reconsider the denied grounds in view of patent owner’s challenge to the prior art in the other proceeding under § 103(c)(1).  On reconsideration, the Board agreed that petitioner had demonstrated a reasonable likelihood of prevailing with respect to one of the asserted grounds.

Square, Inc. v. Thick Computer Corp., CBM2014-00159, Paper 52 (PTAB Feb. 9, 2016) The Board denied patent owner’s request for rehearing of the Board’s final written decision.  The Board denied rehearing because patent owner did not identify where the arguments, citation or evidence, as presented in the rehearing request, were previously addressed in the record.  In the interests of due process and fairness, the Board cannot entertain arguments on rehearing that were not presented earlier.

Presidio Components, Inc. v. AVX Corp., IPR2015-01332, Paper 21 (PTAB Feb. 18, 2016) Mere disagreement with the Board’s analysis or conclusion is not a sufficient basis for rehearing.  It is not an abuse of discretion to provide analysis or conclusion with which the requesting party disagrees.

Shenzhen Liown Elecs. Co., Ltd. v. Disney Enterprises, Inc., IPR2015-01656, Paper 13 (PTAB Mar. 18, 2016) Petitioner cannot contend that the Board erred in construing the plain and ordinary meaning of a claim term, which was consistent with patent owner’s proposed construction, when petitioner did not provide testimony, documentary evidence or analysis in the petition with regard to how the term would have been understood by one skilled in the art in light of the specification of the challenged patent.

AllSteel Inc. v. Dirtt Environmental Sols. Ltd., IPR2015-01690, Paper 13 (PTAB Apr. 4, 2016) The Board denied petitioner’s request for rehearing of the decision denying institution for all challenged claims.  The Board indicated that petitioner did not cite ¶¶ 48-51 of its expert’s declaration to support its argument that it would have been obvious to reverse certain parts of an asserted reference.  In any event, the Board disagreed with petitioner’s newly presented arguments that ¶¶ 48-51 provide a sufficient factual basis to support the expert’s conclusion that the rearranging of parts would work the same as the original arrangement.  The referenced paragraphs address the original arrangement, not the modified arrangement.  As stated in the institution decision, the expert’s testimony regarding the modified arrangement is conclusory.  The panel is not obligated to accept, without a sufficient factual basis, conclusory statements as true.  Something more was needed, and petitioner failed to provide it.

Core Survival, Inc. v. S&S Precision, LLC, PGR2015-00022, Paper 15 (PTAB Apr. 8, 2016) The Board denied petitioner’s rehearing request because it presented new arguments not presented in the petition.  A rehearing request is not the avenue to supplement the reasoning for the unpatentability of challenged claims.  The Board partly granted institution but denied an obviousness challenge because petitioner did not present sufficient reasoning to support the obviousness challenge.  The Board determined that petitioner’s rehearing request largely relied on new arguments and citations to one of the references that were not presented in the petition.  Petitioner’s previous “cursory analysis and bare citations may gesture in the general direction that the Rehearing Request now argues so vehemently,” but the Board was not persuaded that the arguments in the petition were sufficient to institute that ground.

Sandisk Corp. v. Netlist, Inc., IPR2014-00971, Paper 36 (PTAB Apr. 27, 2016).  The Board partially granted and partially denied petitioner’s request for rehearing of the final written decision.  Initially, the Board denied petitioner’s rehearing request that the Board improperly excluded evidence from its reply as to the challenge of claim 4.  In the petition, petitioner challenged claim 4 as being unpatentable over a primary reference and a secondary reference.  In the institution decision, the Board sua sponte instituted trial based on obviousness over the primary reference alone, based on the Board’s determination that petitioner likely would not prevail on the asserted obviousness challenge.   The Board, however, refused to consider evidence and arguments submitted with the reply as to the obviousness challenge over the primary reference alone.  The Board indicated that the instituted ground was based on information presented in the petition, and therefore, petitioner could not present new arguments and/or evidence.  The Board granted petitioner’s rehearing request as to the asserted unpatentability of two claims.

Mylan Pharmaceuticals Inc. v. AstraZeneca AB, IPR2015-01340, Papers 15, 16 (PTAB May 2, 2016) The Board granted institution after previously denying institution.  The judge who had authored the decision denying institution had previously represented patent owner in several lawsuits, and had been a partner with the law firm representing patent owner.  In its request for rehearing, petitioner did not suggest that there was an actual impropriety, but indicated that the mere appearance of possible impropriety is sufficient justified reconsideration by a newly composed panel.  The judge who authored the institution decision was replaced in the panel which granted reconsideration and instituted the proceeding.

SATA GmbH & Co. KG v. Anest Iwata Corp., IPR2015-01790, Paper 16 (PTAB May 17, 2016) The Board denied petitioner’s request for rehearing of the decision not to institute an IPR for several challenged claims, despite the same panel determining in an earlier IPR proceeding that other claims of the patent are unpatentable based on the same grounds of challenge.  Petitioner argued that the Board “ignored the fact that the Final Written Decision of IPR2013- 00111 as well of the bulk of the entire proceedings of the IPR2013-00111” contradicts the Board’s decision not to institute. The Board was not persuaded to reverse its institution decision, however, indicating that “Petitioner does not explain how the Final Written Decision of IPR2013-00111 or ‘the bulk of the entire proceedings’ of that case qualify as either a patent or a printed publication under the statute.” The Board noted that, “to qualify as a printed publication under § 102, a reference ‘must have been sufficiently accessible to the public interested in the art’ at the time the patent application at issue was filed. The results of IPR2013-00111 were, by definition, not available until well after the ’387 patent issued.”   In addressing the inconsistencies of the decisions, the Board indicated that “[a]lthough, where present, illogical results are unfortunate, inter partes reviews are adversarial proceedings and our rules have been set up to respect procedural fairness.” The Board emphasized that the institution decision was based, in part, on inadequacies in the petition.

Google Inc. v. Zuili, CBM2016-00008, Paper 22 (PTAB June 15, 2016). The Board granted petitioner’s request for rehearing of the Board’s decision denying institution of obviousness challenges to the claims. The Board had instituted only the § 101 challenges to the claims. The Board agreed that it had misapprehended petitioner’s arguments in relation to the prior art references, and that petitioner had met the threshold of 35 U.S.C. § 324 to institute trial on the obviousness grounds.

Sony Mobile Comms. Inc. v. SSH Comms. Security Oyj, IPR2015-01869, Paper 16 (PTAB July 21, 2016). The Board partly granted patent owner’s request for rehearing of the decision granting institution of review.  Patent owner correctly pointed out that petitioner relies on an asserted reference to meet the limitations of several claims. “Our Decision indicated incorrectly that the grounds upon which we did not institute, the ‘remaining grounds’ including [the reference], were redundant. However, because [the reference] is not redundant as to claims 4, 11, 21, and 28,” the Board addressed those claims in the rehearing decision.  The Board determined that petitioner did not provide sufficient motivation to modify the base reference to meet the limitations of those claims.  The Board amended its institution decision to not institute review for claims 4, 11, 21, and 28.

Camelbak Prods., LLC v. Ignite USA, LLC, IPR2015-01034, Paper 39 (PTAB Aug. 4, 2016). A request for rehearing is not an opportunity to express mere disagreement with the Final Written Decision or with the Board’s weighing of the evidence. The proper course is to appeal, not file a request for rehearing to re-argue issues that already have been considered and decided.

Nestle Healthcare Nuitrition, Inc. v. Steuben Foods, Inc., IPR2015-00249, Paper 78 (PTAB Sept. 7, 2016).  The Board denied patent owner’s request for rehearing in which patent owner alleged that the Board overlooked an argument that patent owner presented at oral argument.  The Board disagreed because patent owner presented the argument for the first time at the oral argument.  An argument may not be raised for the first time at oral argument.  37 C.F.R. § 42.70(a).  Therefore, the Board’s decision did not overlook patent owner’s argument.

Remand

Dell Inc. v. Acceleron, LLC, IPR2013-00400, Paper 49 (PTAB Aug. 22, 2016) The Federal Circuit faulted the Board for relying on new arguments presented at the oral hearing to find that two challenged claims were obvious.  On remand, the Board reversed its determination that those claims are obvious because the information set forth in the petition did not demonstrate that all the limitations of those claims were disclosed in the prior art.  The Board also refused to consider new arguments and a new claim construction set forth in petitioner’s reply because petitioner had not presented the arguments and construction in its petition, and the new arguments and construction were not responsive to arguments of patent owner.

Secondary Considerations

Secondary considerations based on objective evidence of non-obviousness, if present, must be considered in an obvious determination. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).  Secondary considerations may include any of the following: long-felt but unsolved needs, failure of others, unexpected results, commercial success, copying, licensing, and praise. See Graham, 383 U.S. at 17; Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007).  In the following cases, the Board addressed arguments related to secondary considerations of non-obviousness.

Qulatrics, LLC v. OpinionLab, Inc., IPR2014-00356, Paper 51 (PTAB July 30, 2015).  The Board was not persuaded by patent owner’s evidence of secondary considerations of nonobviousness related to alleged commercial success, industry praise and copying.  The Board indicated that patent owner’s alleged commercial success was not coextensive the claimed invention.  Patent owner’s product is marked with the challenged patent.  That patent marking, however, is only an assertion by patent owner that some feature of the marketed product embodies some claim of the challenged patent.  Such a bare assertion does not constitute sufficient proof that the product is coextensive with the claimed invention.  This is particularly so when the patent is marked with approximately twenty patents, which suggests that the product may include features outside the scope of the invention claimed in the patent.  Further, patent owner did not show that the alleged commercial success or industry praise were the result of the unique characteristics of the claimed invention.  With respect to copying, patent owner alleged that petitioner’s product reads on the claims of the patent.  Copying, however, requires evidence of efforts to replicate a specific product.  Allegations of infringement do not suffice as evidence of actual efforts undertaken by petitioner to copy a product embodying the claimed invention.

Endo Pharmaceuticals, Inc. v. Depomed, Inc., IPR2014-00652, Paper 68 (PTAB Sept. 16, 2015) The Board was not persuaded by patent owner’s evidence of secondary considerations related to commercial success, licensing and long-felt but unsolved need.  With regard to commercial success, patent owner produced sales data of its marketed drug.  The Board noted, however, that patent owner merely cited its expert who referred to claim charts comparing its drug to the claims.  The Board indicated that “merely citing to a claim chart as support—without any explanation in the Patent Owner Response—is insufficient to demonstrate a nexus and violates our rule against incorporation by reference.”  With regard to licensing, the Board indicated that patent owner’s evidence did not demonstrate that licensee took the licenses because of the merits of the claimed invention.  Similarly, the Board indicated that patent owner’s evidence with respect to long-felt need and undue experimentation lacked the required nexus with the claimed invention.

SK Innovation Co., Ltd. v. Celgard, LLC, IPR2014-00680, Paper 57 (PTAB Sept. 25, 2015)The Board held that, although petitioner bears the ultimate burden of persuasion under
35 U.S.C. § 316(e), patent owner must establish a nexus between the objective evidence of nonobviousness and the claimed subject matter.  Objective indicia of nonobviousness must be tied to the novel elements of the claim at issue, and must be reasonably commensurate with the scope of the claims.  Copying requires evidence of efforts to replicate a specific product, not whether a competing product arguably falls within the scope of the patent.   The Board determined that patent owner’s evidence of secondary considerations, including a grant of a preliminary injunction in the related district court proceeding, did not satisfy the nexus requirement because the evidence pertained to claims not at issue in the proceeding as well as other factors outside the scope of the claims at issue.

Seagate Tech. (US) Holdings, Inc. v. Enova Technology Corp., IPR2014-01178, Paper 49 (PTAB Dec. 18, 2015).  The Board was not persuaded by patent owner’s evidence of secondary considerations because patent owner did not establish a sufficient nexus between patent owner’s products and the challenged claims. On commercial success, patent owner did not provide sufficient proof of a relationship between alleged sales and the unique characteristics of the invention embodied in the challenged claims.  To show how commercial success supports nonobviousness, patent owner must prove that sales were a direct result of the unique characteristics of the invention, and not a result of economic and commercial factors unrelated to the quality of the patented subject matter.  If the commercial success is due to an unclaimed feature of the device, or if the feature that creates the commercial success was known in the prior art, the success is not pertinent.  It must be determined whether the commercial success of the embodying product resulted from the merits of the claimed invention as opposed to the prior art or other extrinsic factors.

ABS Global, Inc. and Genus PLC v. XY, LLC, IPR2014-01161, Paper 26 (PTAB Jan. 11, 2016)The Board rejected patent owner’s evidence of secondary considerations of nonobviousness including commercial success and long-felt need.  The Board determined that the alleged commercial success and long-felt were attributed to a patent not at issue in the IPR.  The evidence of secondary considerations did not outweigh the strong showing of obviousness.

HTC Corp. and HTC America, Inc. v. Advanced Audio Devices, LLC, IPR2014-01157, Paper 41 (Jan. 22, 2016) The Board rejected patent owner’s evidence of secondary considerations of nonobviousness.  In cases where the proffered evidence of commercial success is licenses, rather than sales of products embodying the invention, there is a danger that the licenses may have been taken only because they were cheaper than defending an infringement suit.  The Board indicated that they could not determine whether the licenses reflect the commercial value of the claimed invention, or whether they were taken merely to avoid the cost of litigation, either pending or threatened.  Absent a persuasive showing of nexus to the merits of the claimed invention, patent owner’s licensing evidence does not establish commercial success.

Oracle Corp. v. Crossroads Systems, Inc., IPR2014-01207, Paper 78 (PTAB Jan. 29, 2016) The Board held that to establish a proper nexus between a claimed invention and the commercial success of a product, patent owner must offer proof that sales of the allegedly successful product were a direct result of the unique characteristics of the claimed invention, as opposed to other economic and commercial factors unrelated to the quality of the patented subject matter.  The Board determined that patent owner did not establish a nexus between its commercial product and the features of the claims.  Patent owner’s products include many features besides those which are alleged to be nonobvious, and patent owner has not shown that sales of its products resulted from the novel, nonobvious features of the claimed invention rather than other features.  An important component of the commercial success inquiry is determining market share associated with the alleged success, relative to all competing products.

Chums, Inc. v. Cablz, Inc., IPR2014-01240, Paper 43 (PTAB Feb. 8, 2016) The Board rejected patent owner’s evidence of secondary considerations of nonobviousness related to copying, commercial success and industry recognition.  On copying, the Board noted that petitioner’s product uses a different configuration than that of patent owner’s product, and petitioner obtained a patent for its product.  Further, the Board indicated that petitioner could not have copied the “patented product” because the patent issued after petitioner’s product was first sold.  Petitioner could also not copy a feature that was known in the art.  On commercial success, the Board found that the alleged success and industry recognition of patent owner’s product is not pertinent to the issue of nonobviousness, because the feature which contributed to the alleged success and recognition was known in the art.

Hamilton Beach Brands, Inc. v. Courtesy Prods., LLC, IPR2014-01257, Paper 49 (PTAB Feb. 24, 2016) The Board rejected patent owner’s evidence of secondary considerations of nonobviousness.  Even though patent owner’s evidence establishes a nexus between its commercial success and the product embodying the challenged claims, patent owner has failed to establish that the commercial success is due to the merits of the claimed invention beyond what was readily available in the prior art.  The full record at trial establishes that the features of the challenged claims were taught in the prior art.

Saint-Gobain Abrasives, Inc. v. 3M Innovative Properties Co., IPR2014-01281, Paper 27 (PTAB Feb. 23, 2016) The Board rejected patent owner’s evidence of secondary considerations of nonobviousness related to commercial success and industry acclaim.  The Board determined that patent owner did not demonstrate a sufficient nexus between the claimed invention and patent owner’s products because the allegedly unique feature was known in the prior art.  If commercial success is due to an element in the prior art, no nexus exists.  Further, patent owner did not demonstrate that sales or acclaimed benefits were a direct result of the unique characteristics of the claimed invention.

Owens Corning v. CertainTeed Corp., IPR2014-01397, Paper 37 (PTAB Mar. 8, 2016). The Board was not persuaded by patent owner’s evidence of secondary considerations of nonobviousness relating to alleged commercial success. To establish a proper nexus between a claimed invention and the commercial success of a product, patent owner must offer proof that the sales of the allegedly successful product were a direct result of the unique characteristics of the claimed invention—as opposed to other economic and commercial factors unrelated to the quality of the patented subject matter. The Board determined that the evidence provided by patent owner did not show commercial success that can be attributed to the claimed subject matter. The Board indicated that the evidence provided by patent owner did not show that any commercial success attributable to the product resulted from novel, non-obvious features of the claimed invention, rather than other features. Because any commercial success may be attributable, at least in part, to unclaimed features or features known in the prior art, patent owner has not established a nexus between any commercial success and the claimed invention.

Coalition for Affordable Drugs V LLC v. Hoffman-LaRoche Inc., IPR2015-01792, Paper 14 (PTAB Mar. 11, 2016) The Board denied institution, in part, because petitioner did not sufficiently address secondary considerations evidence submitted during prosecution.  Evidence of unexpected results was apparently relied upon by the Examiner in allowing the claims at issue.  Petitioner alleged that the evidence was not commensurate in scope with the claims, but the Board disagreed.  The Board indicated that petitioner should have addressed the evidence of unexpected results in the petition as part of petitioner’s showing of a reasonable likelihood of success on the merits.

Cisco Systems, Inc. v. Crossroads Systems, Inc., IPR2014-01463, Paper 49 (PTAB Mar. 16, 2016) The Board was not persuaded by patent owner’s evidence of secondary considerations of nonobviousness related to long-felt need, commercial success and licensing.  Patent owner’s evidence of long-felt need includes testimony and selected quotes from an article by an expert used by petitioner in a co-pending lawsuit, directed to whether the term “storage router” was used in the art in the late 1990s. This evidence is not sufficient to establish a long-felt need. It does not address what the needs or problems of the art were at that time. With regard to the commercial success inquiry, it is important to determine the market share associated with the alleged success, relative to all competing products. Even sales volume, if provided without market share information, is only weak evidence, if any, of commercial success. The fact that patent owner sold a certain number of these devices and that they made up a certain share of its own sales is insufficient to establish commercial success without some context about the larger market. With regard to licensing evidence, it is unknown how much of the decision to take a license stems from a business cost-benefit analysis with regard to defending an infringement suit or from another business reason, rather than from acknowledged merits of the claimed invention. Patent owner did not provide any information about how many entities refused to take a license, or why they refused.

Amazon.com, Inc. v. Personalized Media Communications, LLC, IPR2014-01531, Paper 55 (PTAB Apr. 1, 2016). The Board was not persuaded by patent owner’s evidence of secondary considerations related to licenses, long-felt need and praise. With regard to long-felt need, the Board indicated that patent owner did not provide evidence that demonstrates both that a demand existed for the claimed invention, and that others tried but failed to satisfy that demand. With regard to licenses and praise, the Board indicated that patent owner’s evidence did not have a sufficient nexus to the merits of the claimed invention. Patent owner presented evidence related to the entire family of patents, not to the features of the claims at issue.

Telebrands Corp. v. Tinnus Enterprises, LLC, PGR2015-00018, Paper 31 (PTAB Apr. 4, 2016). The Board partly granted patent owner’s motion for additional discovery related to secondary considerations of non-obviousness. It is undisputed, for purposes of patent owner’s motion, that emails dated prior to issuance of the challenged patent, between petitioner and a designer or manufacturer of petitioner’s product, contained references to patent owner’s product. Those emails, when viewed in light of the evidence tending to show that petitioner’s product is a virtually-identical replica of patent owner’s product, are sufficient evidence of copying at this stage of the proceeding [prior to the patent owner response after institution] to justify patent owner’s request for discovery of the specified documents produced in the related district court litigation, as well as any other documents that contain communications, between petitioner and a designer or manufacturer of petitioner’s product, mentioning patent owner’s product. The Board determined that, at this stage of the proceeding, patent owner’s allegations of commercial success are sufficient to justify the request for “documents sufficient to show” the gross revenue derived from sales of petitioner’s product.

Tiffany and Co. v. Lazare Kaplan Int’l, Inc., IPR2015-00024, Paper 34 (PTAB Apr. 13, 2016). The Board was not persuaded by patent owner’s evidence of secondary considerations related to alleged commercial success and copying. As evidence of commercial success, patent owner relied on a license agreement between patent owner and a third party. Patent owner argued that the third party’s use of the licensed technology “skyrocketed” due to being able to use aspects of the patented system. The Board determined that patent owner had not demonstrated a nexus with the claimed invention, because patent owner did not demonstrate that the license was due to the claimed features which patent owner argued as being patentable over the prior art. If commercial success is due to features which are known in the prior art, there is no nexus between the claimed invention and the commercial success. With regard to copying, patent owner argued that it sued a third party for infringement. The Board was not persuaded by this evidence. Not every competing product that arguably falls within the scope of a patent is evidence of copying; otherwise, every infringement suit would automatically confirm the nonobviousness of the patent. The Board indicated that patent owner failed to provide credible evidence on copying of a specific product.

Masterimage 3D, Inc. v. RealD Inc., IPR2015-00040, Paper 85 (PTAB Apr. 14, 2016). The Board was not persuaded by patent owner’s secondary considerations evidence related to commercial success, copying and industry praise. Patent owner does not represent that its commercial product embodying the claimed invention is its only product. Therefore, the market share in total box office receipts is not sufficiently tied to the commercial product. Patent owner does not represent that its share of the total receipts is derived solely from use of the commercial product. Consequently, from the evidence provided, the Board could not determine what portion of that estimated market share is derived from the product that embodies the claimed invention. With respect to copying, patent owner did not provide sufficient evidence of petitioner’s product to show that petitioner attempted to replicate patent owner’s product. The Board indicated that the industry praise is not meaningful without additional details about who praised the product, in what setting, why, and what exactly is the structure of the product. It is widespread recognition in the field that constitutes meaningful evidence of nonobviousness, not just isolated praises that are not industry-wide. Patent owner did not identify and explain such widespread peer recognition in the art.

Product Miniature, Inc. v. PO Displays USA, LLC, IPR2015-00266, Paper 43 (PTAB Apr. 13, 2016) The Board rejected patent owner’s evidence of secondary considerations of nonobviousness directed to commercial success, copying, licenses, and long-felt need.  The Board determined that patent owner’s declarants, while asserting that its product embodies the challenged claims, did not provide an adequate explanation as to whether the claims are embodied in the product or which of the claimed features is the cause of the alleged commercial success.  The Board indicated that patent owner did not establish the required nexus between any alleged copying or alleged licensing and the merits of the claimed invention.  Further, patent owner’s evidence did not sufficiently demonstrate that a demand existed and that others tried and failed. Patent owner also did not establish the required nexus between any long-felt need and the merits of the claimed invention.

Asustek Computer Inc. v. Exotablet, Ltd., IPR2015-00046, Paper 26 (PTAB Apr. 18, 2016).  The Board rejected patent owner’s evidence of secondary considerations of nonobviousness related to alleged copying.  The sole support patent owner cites for copying is a district court’s finding that patent owner was likely to succeed on the merits of its claim that petitioner infringed claim 1, and the purported admission by petitioner’s expert that petitioner’s product meets the element of claim 7.  However, the cited subject matter from the district court is silent on claim 7, and the question of infringement is entirely different from that of copying.  Patent owner has offered no evidence to support its argument of copying as objective indicia of nonobviousness.

Zhongshan Broad Ocean Motor Co., Ltd. v. Nidec Motor Corp., IPR2014-01121, Paper 86 (PTAB May 9, 2016) The Board rejected patent owner’s argument of secondary considerations of nonobviousness related to alleged commercial success.   The Board indicated that patent owner did not provide testimony or documentation establishing a connection between the allegedly patentable feature the increase in sales for its new product.  For this reason alone, patent owner failed to establish the necessary nexus between the merits of the claimed invention and patent owner’s evidence of secondary considerations.  The Board also noted that other features of patent owner’s products may have contributed to the commercial success of its products and therefore patent owner did not establish the requisite nexus.

Petroleum Geo-Services Inc. v. WesternGeco LLC, IPR2014-01478, Paper 72 (PTAB July 11, 2016). The Board rejected patent owner’s argument of secondary considerations of nonobviousness related to alleged commercial success and industry praise. With regard to commercial success, the Board determined that patent owner’s evidence was not sufficiently linked to the claims at issue. The Board indicated that any commercial success was attributable to features that the challenged claims were not limited to and that were already known in the art. Patent owner did not demonstrate that sales were a direct result of the unique characteristics of the invention, and not a result of economic and commercial factors unrelated to the quality of the patented subject matter. The Board also indicated that patent owner’s evidence of volume of sales was insufficient without accompanying market share data. Absolute sale numbers without market share data do not establish commercial success. With regard to industry praise, the Board indicated that patent owner’s evidence related to features not required in the claims.

Innopharma Licensing, Inc. v. Senju Pharmaceutical Co., Ltd., IPR2015-00902, Paper 90 (PTAB July 28, 2016). The Board was persuaded by patent owner’s evidence of secondary considerations of nonobviousness related to unexpected results, commercial success and industry acclaim. The Board determined that the secondary considerations evidence weighed in favor of the claims being nonobvious, particularly in view of the unexpected results which showed a surprising stabilizing effect that is not suggested by the prior art. Patent owner’s evidence showed that the compound was 44% more stable when using a claimed component than was disclosed by one of the asserted references. A commercial product that embodies the claimed invention gives rise to a presumption that the commercial success of that product is due to the claimed invention, absent persuasive evidence to the contrary.

Leapfrog Prod. Dev., LLC v. Lifefactory, Inc., IPR2015-00614, Paper 31 (PTAB Aug. 17, 2016). The Board was persuaded by patent owner’s secondary considerations evidence for claim 20 of the patent related to commercial success and industry praise. “There is a presumption of nexus for objective considerations when the patentee shows that the asserted objective evidence is tied to a specific product and that product ‘is the invention disclosed and claimed in the patent.’” WBIP, LLC v. Kohler Co., Nos. 2015-1038, 2015-1044, at 7 (Fed. Cir. July 19, 2016) (quoting Rambus, Inc. v. Rea, 731, F.3d 1248, 1258)). The Board determined that, under WBIP, patent owner demonstrated a presumption of nexus between the evidence of objective indicia and claim 20. The Board concluded that petitioner did not rebut this presumption by presenting evidence that shows the success and praise of the product were due to factors other than the patented invention. Petitioner argued that patent owner’s evidence of praise was hearsay. Petitioner waived its objection to patent owner’s evidence of praise by not filing a motion to exclude that evidence.

Standing

To have standing to pursue CBM review, a petitioner or the petitioner’s real party-in-interest must have been sued or charged with infringement of the patent. AIA § 18(a)(1)(B) and 37 C.F.R. 42.302(a).

Acxiom Corp. v. Phoenix Licensing, LLC, CBM2015-00068, Paper 23 (PTAB Aug. 11, 2015). The Board denied institution of CBM review because petitioner did not have standing to challenge the patent under AIA § 18(a)(1)(B) and 37 C.F.R. § 42.302(a). Multiple petitioners cannot be treated as a single legal entity for the purpose of determining standing to file a CBM petition. Each petitioner must have standing at the time of filing, and if instituted, the case will proceed procedurally with the multiple petitioners treated as a single entity. The fact that a party itself has not been sued for infringement, or charged with infringement, does not preclude that party from filing a CBM petition. That party may acquire standing if its real party-in-interest or privy has been sued for, or charged with, infringement.

Westlake Services, LLC v. Credit Acceptance Corp., CBM2014-00176, Paper 41 (Sept. 3, 2015).  The Board denied patent owner’s motion to terminate the proceeding, after the district court dismissed with prejudice patent owner’s infringement claim against petitioner. Patent owner argued that AIA § 18(a)(1)(B) and 37 C.F.R. § 42.302(a) impose a continuous standing requirement throughout a CBM proceeding, and that there is no remaining case or controversy sufficient to maintain the proceeding after dismissal of the infringement claim with prejudice. The Board disagreed, holding that standing for a CBM proceeding is conferred by AIA § 18(a)(1)(B), that standing for a CBM proceeding is evaluated at the time a petition is filed, and that there is no requirement for a continuous infringement controversy under AIA § 18(a)(1)(B).

J.P. Morgan Chase & Co. v. Intellectual Ventures II LLC, CBM2014-00157, Paper 40 (PTAB Jan. 12, 2016). A petitioner does not lose standing in a CBM proceeding if the claim that served as the basis for CBM eligibility is disclaimed by the patent owner during the proceeding. AIA § 18(a)(1)(B) provides that a person may not file a petition for CBM review “unless the person or the person’s real party in interest or privy has been sued for infringement of the patent or has been charged with infringement under that patent.” Based on this provision, the Board held that “the plain language of the AIA requires us to determine whether petitioner had standing to file a petition for CBM patent review at the time the petition was filed; not whether petitioner has standing throughout the proceeding.” (emphasis original)

Ocean Tomo, LLC v. Patent Ratings, LLC, CBM2015-00157, Paper 16 (PTAB Jan. 25, 2016). Standing to file a covered business method patent review is a threshold issue. The petition must show through sufficient proof that the petitioner meets the requirements of 37 C.F.R. § 42.302. The Board denied institution because petitioner did not demonstrate that it has been sued for infringement of the challenged patent or been charged with infringement of the challenged patent. The controversy between the parties, which includes allegations of contractual and tortious conduct arising out of an employment and business relationship gone awry, does not meet the threshold requirements of 37 C.F.R. 42.302(a).

Acxiom Corp. v. Phoenix Licensing, LLC, CBM2015-00180, Paper 18 (PTAB Mar. 21, 2016). The Board denied institution of CBM review because petitioner did not have standing to challenge the patent under AIA § 18(a)(1)(B) and 37 C.F.R. § 42.302(a). The fact that petitioner itself has not been sued for infringement, or charged with infringement, does not preclude petitioner from filing a CBM petition. Petitioner may acquire standing if its real party-in-interest or privy has been sued for, or charged with, infringement. However, petitioner must establish more than just the fact that it sold products to an entity that has been sued for infringement. Claims of indemnity are not sufficient to establish privity. Petitioner must demonstrate that it has an obligation to indemnify those who have been sued for, or charged with, infringement of the challenged patent.

Stay

The following cases address requests by the parties to stay instituted IPR or CBM proceedings, or to stay other proceedings involving the challenged patent.

Tradestation Group, Inc. v. Trading Techs. Int’l, Inc., CBM2015-00161, Paper 38 (Mar. 10, 2016) The Board denied patent owner’s request to file a motion to stay the proceeding beyond the one-year period for the Board to issue a final written decision pursuant to 37 C.F.R. § 43.300(c).  Patent owner requested the stay until the Federal Circuit decides an appeal of a district court decision finding that the claims of the challenged patent recite patent-eligible subject matter under 35 U.S.C. § 101.  While noting that 37 C.F.R. § 43.300(c) permits the Board to extend the period for issuing a final written decision for an additional six months for good cause, the Board indicated that patent owner did not demonstrate that there was good cause to extend the period for issuing the final written decision.  The Board indicated that the trial portion of the proceeding would have to be compressed into a six-month period because patent owner had not yet filed a patent owner response.

Nestle USA, Inc. v. Steuben Foods, Inc., IPR2015-00195, Paper 96 (PTAB Mar. 21, 2016).  The Board denied patent owner’s motion to stay a co-pending ex parte reexamination of the challenged patent.  The reexamination was previously stayed during the co-pendency of a previous IPR that was terminated.  Patent owner requested to stay the reexamination again, asserting that the grounds on which the Board instituted in the present IPR are substantially identical to those on which the Examiner has rejected the claims in the reexamination.  The Board denied the stay because, while patent owner points to the potential for inconsistency, no actual conflict between the reexamination and the IPR proceeding exists.  The final written decision will be issued in approximately two months.  Thus, should any actual conflict occur between the two proceedings, it can be resolved when the reexamination is appealed to the Board.  A stay is also not appropriate because the reexamination addresses additional claims and prior art that are not at issue in the IPR proceeding.

Bio-Rad Labs, Inc. v. GE Healthcare Bio-Sciences AB, IPR2015-01826, Paper 18 (PTAB Apr. 8, 2016) The Board stayed the reissue of the patent involved in the IPR proceeding pursuant to 37 C.F.R. §§ 42.3 and 42.122. Ordinarily, the Board will not stay a reissue application in the absence of good cause because reissue applications are given special status. In this case, however, conducting the examination of the reissue application concurrently with the IPR proceeding would duplicate efforts within the Office and could potentially result in inconsistencies between the proceedings. The claims pending in the reissue application include the claims for which the Board instituted trial in the IPR proceeding. The reissue application has not been examined, and no Office actions have been entered. Patent owner, however, seeks to amend claim 3 in the reissue application. Should examination of the reissue application begin, the Office may allow claim 3, as amended, thereby changing the scope of the claim while the Board is conducting its review in the IPR proceeding.

Apple Inc. v. E-Watch, Inc., IPR2015-00412, Paper 11 (PTAB Apr. 15, 2016) The Board denied patent owner authorization to file a motion to extend the pendency of the proceedings 6-7 weeks beyond the current statutory due date of the final written decision, to await a decision by the Supreme Court in Cuozzo. The situation is not unique to patent owner, who still has other potential recourse to have the case remanded back to the Board from the Federal Circuit, if petitioner prevails and patent owner appeals the final written decision, in light of any decision by the Supreme Court that the rule of broadest reasonable interpretation (BRI) should not be applied. The Board noted that patent owner had not articulated any difference in the reading of the claims onto the prior art even if BRI were not applied. A motion directed to the Chief Administrative Patent Judge to extend the one-year period to complete the trial is not meaningful unless the panel is persuaded to grant a stay of proceeding beyond that period.

Geosys-Intl, Inc. v. Farmer’s Edge Precision Consulting, Inc., IPR2015-00709, Paper 30 (PTAB Apr. 19, 2016). The Board granted petitioner’s unopposed motion to stay the reissue application of the challenged patent. The claims of the patent are subject to a patentability determination in two separate proceedings before the Office. That scenario merits staying the examination of the reissue application. Such a stay is practical as it would conserve Office resources by reducing the possibility of duplicative, or unnecessary, efforts, and would also lessen the potential for inconsistent results.

Volkswagen Grp. of Am., Inc. v. Joao Control & Monitoring Sys., LLC, IPR2015-01508, Paper 24 (PTAB June 6, 2016) The Board sua sponte ordered, under 35 U.S.C. § 315(d), and 37 C.F.R. §§ 42.3(a) and 42.122(a), an ex parte reeaxamination to be stayed pending the outcome of the IPR proceeding. The Board noted that claim 3 of the patent is challenged in two IPRs and a reexamination proceeding, and these challenges overlap as to the claim construction arguments advanced and the prior art asserted. The Boaard indicated that staying the reexamination was appropriate because claim 3 is subject to a patentability determination in multiple proceedings before the Office, and because a stay would conserve Office resources and would lessen the potential for inconsistent results.

Supplemental Evidence

37 C.F.R. § 42.64(b)(2) provides that the party relying on evidence to which an objection is timely served may respond to the objection by serving supplemental evidence within ten business days of service of the objection.

Handi Quilter, Inc. v. Bernina Int’l AG, IPR2013-00364, Paper 30 (PTAB June 12, 2014).  The Board explained the difference between supplemental evidence under 37 C.F.R. § 42.64(b)(2) and supplemental information under 37 C.F.R. § 42.123(a).  Supplemental evidence is served in response to an evidentiary objection.  Supplemental evidence 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.  On the other hand, supplemental information is evidence a party intends to support an argument on the merits.

Avocent Huntsville Corp. v. Cyber Switching Patents, LLC, IPR2015-00690, Paper 28 (PTAB Oct. 2, 2015). The Board denied petitioner’s motion to submit supplemental information because petitioner’s proposed evidence should have been served on patent owner as supplemental evidence pursuant to 37 C.F.R. § 42.64(b)(2). Petitioner sought permission to enter a declaration attesting to the public availability of webpages catalogued by the Internet Archive. The Board stated that to the extent these items are used to support the admissibility of petitioner’s originally filed evidence, the items could be filed as exhibits if the items were served on patent owner. The Board noted that the items of evidence, described as “supplemental information,” were instead directed to patent owner’s evidentiary objections and should have been served on patent owner as supplemental evidence. Petitioner should not have sought to submit such evidence as supplemental information. Supplemental evidence, served in response to an evidentiary objection, is limited to supporting the admissibility of originally filed evidence, and cannot be used to introduce documents for the purpose of supporting an argument on the merits.

Toshiba Corp. v. Optical Devices, LLC, IPR2014-01446, Paper 31 (PTAB Mar. 9, 2016) The Board granted patent owner’s motion to exclude as untimely a webpage link to a downloadable data sheet and a screenshot submitted with petitioner’s reply.  Petitioner did not serve or file those exhibits under 37 C.F.R. § 42.64(b) in response to patent owner’s evidentiary objections, nor filed under 37 C.F.R. § 42.123(b) as supplemental information.  Petitioner argued that the exhibits were submitted, under 37 C.F.R. § 42.23, in response to patent owner’s arguments in its response.  The Board indicated that petitioner’s reliance on 37 C.F.R. § 42.23 is misplaced, because there are rules to submit supplemental evidence or supplemental information, and petitioner did not follow those rules.

Supplemental Information

Once a trial has been instituted, a party may file a motion to submit supplemental information, which is evidence a party intends to support an argument on the merits.  37 C.F.R. §§ 42.123(a) and 42.223(a).

Redline Detection LLC v. Star Envirotech, 811 F.3d 435 (Fed. Cir. 2015). Under 37 C.F.R. § 42.123, the Board has the discretion to decline review of timely filed “supplemental information” from a petitioner. The Board is entitled to deference in interpreting its own rules. Requiring the Board to accept all timely, relevant supplemental information would read out other portions of the Board’s rules, including the Board’s discretion to grant or deny motions under 37 C.F.R. § 42.5(a) and (b). The court held that the Board’s refusal to allow Redline to submit supporting declarations after institution was not an error. Redline did not submit supporting declarations with the petition in an attempt to save costs. Redline sought to submit the declarations after institution, arguing that they satisfied the “relevance” requirement under 37 C.F.R. § 42.123(a). The Board declined authorization, indicating that Redline did not provide sufficient justification for the late submission of the declarations.

CyanoTech Corp. v. Board of Trustees, IPR2013-00401, Paper 41 (PTAB May 9, 2014) The Board authorized patent owner’s motion to submit supplemental information under 37 C.F.R. § 42.123(b).  Patent owner sought to submit a pair of emails from petitioner addressing a technical issue under consideration in the IPR proceeding.  Patent owner argued that the supplemental documents could not have been submitted earlier because they were part of a document production consisting of over 100,000 pages.  Patent owner also argued that consideration of the supplemental information would be in the interests of justice because the information includes petitioner’s own statements concerning issues under consideration in the IPR.  The Board determined that the interests of justice were served by permitting entry of the supplemental information, and that any prejudice to petitioner would be negligible since petitioner will have an opportunity to cross-examine patent owner’s witnesses about the supplemental information and may introduce direct testimonial evidence with its reply.

Google Inc. v. Jongerius Panoramic Techs., IPR2013-00191, Paper 39 (PTAB Jan. 21, 2014).  The Board authorized petitioner’s motion to submit supplemental information under 37 C.F.R. § 42.123(b).  Petitioner filed an opposition to patent owner’s motion to amend and a supporting expert declaration, in which petitioner and the declarant cited to a European patent instead of the corresponding US patent.  Petitioner sought to correct the citations, because the European patent was not prior art against the challenged patent while the counterpart US patent qualifies as prior art.   The Board authorized the submission of the citation corrections as supplemental information on the basis that patent owner acknowledged the technical teachings of the US and European patents are similar, and that patent owner would have an opportunity to cross-examine petitioner’s declarant on the basis of the supplemental information.

Handi Quilter, Inc. v. Bernina Int’l AG, IPR2013-00364, Paper 30 (PTAB June 12, 2014) The Board explained the difference between supplemental evidence under 37 C.F.R. § 42.64(b)(2) and supplemental information under 37 C.F.R. § 42.123(a).  Supplemental evidence is served in response to an evidentiary objection.  Supplemental evidence 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.  On the other hand, supplemental information is evidence a party intends to support an argument on the merits.

ServiceNow, Inc. v. BMC Software, Inc., IPR2015-01176, Paper 15 (PTAB Dec. 29, 2015) Petitioner requested authorization to file a motion to submit supplemental information related to certain prior art references at issue in the proceeding.  Patent owner objected to the references as lacking authentication and containing hearsay. The Board determined that the evidence that petitioner intended to submit with the requested motion is more properly considered supplemental evidence under 37 C.F.R. 42.64(b)(2), instead of supplemental information, because the evidence attempts to cure patent owner’s authentication and hearsay objections.  The Board therefore denied the motion since the evidence was not considered to be supplemental information.

Mylan Pharmaceuticals Inc. v. Yeda Research & Development Co. Ltd., IPR2015-00643, Paper 48 (PTAB Feb. 1, 2016) Under 37 C.F.R. 42.123(b), a motion to submit supplemental information more than one month after the date the trial is instituted must show (a) why the supplemental information reasonably could not have been obtained earlier, and (b) that consideration of the supplemental information would be in the interests-of-justice.  Patent owner sought to file nine references that were cited in an expert declaration submitted with the patent owner response.  Patent owner filed its motion approximately four months after institution.   In the interests of justice, the Board determined that patent owner could submit documents that were not marked as confidential in the related litigation, but could not submit confidential documents from the related litigation that were not previously available to petitioner’s counsel.

Creston Electronics, Inc. v. Intuitive Building Controls, Inc., IPR2015-01379, Paper 27 (PTAB Feb. 2, 2016) The proponent of a motion to submit supplemental information has the burden of proof to establish that the proposed new information is supplemental information, rather than supplemental evidence. The Board granted petitioner’s motion to submit supplemental information under 37 C.F.R. 42.123(a) in the form of exhibits supporting the arguments on the merits of the public accessibility of three relied-upon references.  Petitioner requested authorization for the motion within one month of the institution decision.  The Board determined that the proffered supplemental information provides additional evidence that the prior art references for each of the instituted grounds are indeed prior art and does not change the grounds of unpatentability authorized in the proceeding or the evidence initially presented in the Petition to support those grounds of unpatentability. Evidence establishing that a reference qualifies as a printed publication is supplemental information because it is an issue going to the substantive argument on the merit of whether the reference is properly prior art.

GoPro, Inc. v. Countour IP Holding LLC, IPR2015-01078, Paper 34 (PTAB Mar. 17, 2016). The Board authorized patent owner to file a motion to submit supplemental information in the form of a supplemental declaration. Patent owner filed an expert declaration regarding alleged secondary considerations of non-obviousness with its response. In response to evidentiary objections by petitioner, patent owner served a supplemental declaration from its expert as supplemental evidence pursuant to 37 C.F.R. § 42.64(b)(2). The supplemental declaration included additional testimony designed to cure the alleged evidentiary issues with the original declaration, and provide additional “context.” Patent owner argued that it would be appropriate to file the supplemental declaration now as supplemental information to ensure a full record.   The Board required the motion to detail the differences between the expert’s original and supplemental declarations, address the requirements of 37 C.F.R. § 42.123(b), and explain why the supplemental declaration, particularly the additional “context” testimony, should be submitted at that stage of the proceeding.

Chervon N. Am, Inc. v. Milwaukee Elec. Tool. Corp., IPR2015-00595, Paper 64 (PTAB Apr. 7, 2016). The Board denied authorization for patent owner authorization to file supplemental information relating to secondary considerations of non-obviousness a few weeks before the oral hearing. The Board indicated that patent owner did not show that its request to file a motion to submit supplemental information meets the requirements of 37 C.F.R. § 42.123(b). “Even accepting for the sake of argument Patent Owner’s contention that it could not obtain permission earlier from its licensees to submit the additional licenses, this earlier lack of permission does not justify filing the additional licenses at this late stage in the proceedings and denying Petitioner a fair opportunity to fully consider and address the licenses.”

Gen. Elec. Co. v. Univ. of Virginia Patent Found., IPR2016-00357, Paper 9 (PTAB Apr. 27, 2016). The Board granted petitioner authorization to file a motion to submit supplemental information under 37 C.F.R. § 42.123(c). Petitioner sought to file, prior to the Board’s institution decision, an Office Action from a related application. Petitioner asserted that the Office Action is relevant evidence because it addresses claims “nearly identical” to those at issue in the IPR proceeding, as well as some of the same prior art references asserted in the petition. Petitioner also indicated that the Office Action was not available at the time the petition was filed.

Steadymed Ltd. v. Utd. Therapeutics Corp., IPR2016-00006, Paper 25 (PTAB May 11, 2016). The Board authorized petitioner’s motion to submit supplemental information in the form of two declarations, attesting to the accuracy of the English translation of a Japanese patent application publication. The supplemental information petitioner requested to submit is relevant to the patentability of several challenged claims on which trial has been instituted under § 103(a). Petitioner has met its burden because the supplemental information does not change the grounds of unpatentability authorized in this proceeding, nor does it change the evidence initially presented in the petition to support those grounds of unpatentability. Rather, the proffered declarations constitute additional evidence that allegedly confirms the accuracy of the English translation of the Japanese reference.

Umicore AG & Co. KG v. BASF Corp., IPR2015-01121, Paper 41 (PTAB June 8, 2016). The Board denied patent owner’s motion for the late submission of supplemental information because patent owner did not sufficiently explain its delay in requesting to submit the supplemental information. Patent owner sought to submit a copy of a published patent application assigned to petitioner. Patent owner alleged that petitioner was taking inconsistent positions in the IPR proceeding relative to the publication. Patent owner indicated that it first became aware of the publication on the day it was published, but the Board noted that patent owner waited over two months to request authorization to file a motion to submit supplemental information. The Board indicated that “in the absence of an explanation for Patent Owner’s delay other than that Patent Owner was ‘examining the history of the [publication] and comparing it’ to Petitioner’s positions,…Patent Owner failed to promptly seek the relief it requests in the present motion.”

IBG LLC v. Trading Techs. Int’l, Inc., CBM2015-00161, Paper 108 (PTAB Sept. 1, 2016). The Board denied patent owner’s motion to submit supplemental information consisting of documents and briefing that had been subject to a protective order in the related district court litigation. Noting that the petition was filed in July 2015, and that trial was instituted in January 2016, patent owner was on notice several months prior to its request in May 2016. Patent owner does not explain why it waited until May 2016 to seek petitioner’s agreement on evidence subject to the protective order, and, more importantly, why patent owner did not go to the district court to seek relief from the protective order prior to July 2016. The Board also faulted patent owner for not showing why the information reasonably could not have been obtained at least prior to May 2016. The Board indicated that allowing patent owner to submit supplemental information after filing its responses “would severely undermine the Board’s ability to administer and complete these proceedings in a just, speedy, and inexpensive way.”

Sur-Reply

In IPR, CBM and PGR proceedings, the patent owner may file an optional preliminary response to the petition.  35 U.S.C. §§ 313 and 323.  If the Board institutes trial, the patent owner may file a response, and the petitioner can then file a reply to the patent owner response.  35 U.S.C. §§ 316(a)(8), 316(a)(13), 326(a)(8) and 326(a)(13).  No other briefing opportunities are permitted as a matter of right.  Under 37 C.F.R. § 42.20, the parties may request a motion to file a sur-reply for additional briefing.

Hewlett-Packard Co. v. U.S. Phillips Corp., IPR2015-01505, Paper 15 (PTAB Dec. 16, 2015) The Board denied petitioner’s request to file a reply to patent owner’s preliminary response, in which patent owner challenged whether several relied-upon references qualify as printed publications within the meaning of 35 U.S.C. §§ 102 and 311(b).  The Board was not persuaded that additional briefing on this issue was warranted.  An inter partes review may not be authorized unless the information presented in the petition shows a reasonable likelihood that petitioner would prevail with respect to at least one challenged claim.  35 U.S.C. § 314(a); 37 C.F.R. § 42.108(c).  Allowing petitioner to file a reply at this stage would be tantamount to providing additional pages for the petition.  Petitioner has the burden to establish in its petition a reasonable likelihood of success, including, among other things, making a threshold showing that relied-upon references qualify as printed publications.  The Board also noted that petitioner waiting six weeks until after the preliminary response was filed to request permission for the reply weighed in favor of denying authorization.

Coalition for Affordable Drugs V LLC. v. Biogen MA Inc., IPR2015-01993, Paper 18 (PTAB Feb. 3, 2016) The Board denied patent owner’s request for authorization to file a sur-reply in response to petitioner’s reply to patent owner’s preliminary response.  The Board has the discretion whether to authorize filing of a sur-reply.  If a sur-reply is authorized, then a further paper from petitioner would need to be considered because generally a party with the burden of proof (petitioner in this instance) is entitled to the final word.  The petition, preliminary response and reply are sufficient to enable the Board to make an informed decision on whether to an institute an IPR.  Moreover, to the extent that patent owner believes petitioner may have raised a “new issue” in its reply, the Board can determine sua sponte whether an appropriate new issue has been raised.

Intex Recreation Corp. v. Bestway Inflatables & Material Corp., IPR2016-00180, Paper 9 (PTAB Mar. 25, 2016) The Board authorized petitioner to file a reply to patent owner’s preliminary response to address the sufficiency of a copyright notice on three asserted prior art references. The Board indicated that additional briefing was warranted due to the varying interpretation among different panels of the PTAB as to whether a copyright notice amounts to sufficient evidence of public accessibility for purposes of institution.  The Board, however, declined authorization for petitioner to submit any supplemental evidence to cure any evidentiary issues regarding the public accessibility of the asserted references.  The Board indicated that “[p]etitioner was fully aware of the need to prove that element of its case at the time it filed its Petition, and, thus, evidence of that nature should have been submitted with the Petition had Petitioner wanted it considered for purposes of institution.”

Samsung Elecs. Am., Inc. v. Queen’s Univ. at Kingston, IPR2015-00583, Paper 39 (PTAB Mar. 25, 2016) In response to patent owner’s arguments that an expert report filed with petitioner’s reply presented new evidence or arguments relating to whether an asserted reference is enabling, the Board authorized patent owner to file a sur-reply limited to whether the asserted reference is enabling.

Genzyme Corp. v. Genetech, Inc., IPR2016-00383, Paper 11 (PTAB May 18, 2016) The Board authorized petitioner to file a reply directed to arguments made by patent owner in its preliminary response that the petition should be denied on the basis of 35 U.S.C. §§ 325(d) and 315(e).   Patent owner argued that an entity related to petitioner had previously filed an IPR petition against the patent, and that there was a common real party-in-interest in both IPR proceedings.  The Board limited petitioner’s reply to the issues raised by patent owner under 35 U.S.C. §§ 325(d) and 315(e).  The Board authorized petitioner to submit additional evidence with its reply, but required petitioner to make any declarant available for a deposition before a decision on institution is made.

Vista Outdoor Operations LLC v. Liberty Ammunition, LLC, IPR2016-00539, Paper 7 (PTAB May 25, 2016) The Board authorized petitioner to file a reply to patent owner’s preliminary response to in order to respond to arguments regarding real party-in-interest (RPI) and privity. Patent owner argued that the petition should be denied under 35 U.S.C. § 315(a)(2), because petitioner did not name at least one RPI. In addition, patent owner argued that the petition should be denied under 35 U.S.C. § 315(b), because an RPI and/or a privy of petitioner was served with a complaint alleging infringement of the challenged patent more than one year prior to the petition’s filing date. The Board granted petitioner’s request to file a reply because the statutory bar of 35 U.S.C. § 315(b) is a threshold issue, and a reply would assist the Board in deciding these issues in the proceeding.

Kayak Software Corp. v. Int’l Bus. Machs. Corp., IPR2016-00605, Paper 11 (PTAB June 2, 2016). The Board denied authorization for petitioner to file a reply to patent owner’s preliminary response to address a split on the Board as to how it treats copyright dates on documents in evaluating whether references would have been publicly available to qualify as a printed publication. The Board indicated that petitioner did not establish good cause to submit additional briefing.

Kayak Software Corp. v. Int’l Bus. Machs. Corp., IPR2016-00608, Paper 14 (PTAB June 2, 2016). The Board granted authorization for petitioner to file a reply to patent owner’s preliminary response to address patent owner’s arguments and evidence that the challenged claims have an earlier date of invention than an asserted reference. The Board indicated that petitioner’s reply is limited to addressing patent owner’s arguments regarding its invention date.

Twilio Inc. v. Telesign Corp., IPR2016-00450, Paper 14 (PTAB June 3, 2016). The Board denied authorization for petitioner to file a reply to patent owner’s preliminary response to address whether the challenged patent is entitled to claim priority to an earlier application and whether petitioner could submit evidence that one of the asserted references is prior art to the priority application. The Board indicated that “[g]enerally, a petitioner is not authorized to file a reply to a patent owner preliminary response,” and that petitioner did not demonstrate that the Board should deviate from the normal procedure. The Board stated that it is “capable of applying the indicated facts to the indicated statutes, rules, and case law,” and was not persuaded that it would benefit from additional briefing or supplementation.   With regard to petitioner’s request to submit new evidence, the Board indicated that petitioner could revisit the issue if institution is granted.

1964 Ears, LLC v. Jerry Harvey Audio Holdings, LLC, IPR2016-00494, Paper 20 (PTAB June 15, 2016). The Board denied authorization for petitioner to file a reply to patent owner’s arguments in its preliminary response regarding real party-in-interest and secondary considerations of non-obviousness. Petitioner argued that it could not have addressed these arguments in its petition. The Board disagreed, indicating that the preliminary response is the first opportunity for patent owner to articulate anything. Thus, the fact that petitioner, when filing the petition, did not know about positions taken by patent owner in its preliminary response is nothing unexpected. The rules governing an inter partes review do not provide for filing a reply to a preliminary response. To justify filing such a reply, petitioner should present a special circumstance beyond the fact that Patent Owner’s Preliminary Response presented something “new,” to which petitioner has not had a chance to respond.  The Board also noted that petitioner waiting six weeks until after the preliminary response was filed to request permission for the reply weighed in favor of denying authorization.

Samsung Elecs. Co., Ltd. v. Rosetta-Wireless Corp., IPR2016-00622, Paper 11 (PTAB June 15, 2016).  The Board denied authorization for petitioner to file a reply to patent owner’s preliminary response in order to address claim term constructions that petitioner did not address in the petition. The Board disagreed with petitioner’s argument that patent owner’s proposed constructions were unforeseeable. The mere fact that patent owner seeks construction of a different set of claim terms, or that petitioner does not agree with patent owner’s arguments behind the proposed constructions of the different terms does not justify additional briefing. The Board also denied authorization for petitioner authorization to file a reply to further address a reference’s status as prior art. Under 37 C.F.R. § 42.1014(b)(2), petitioner was required to set forth in the petition the specific statutory grounds for its challenge. The fact that petitioner may now wish to respond to patent owner’s arguments regarding the prior art status of the reference—and to potentially augment the basis of its prior art showing— does not warrant additional briefing on this issue.

HP, Inc. v. Memjet Tech., Ltd., IPR2016-00537, Paper 8 (PTAB June 17, 2016) The Board granted petitioner authorization to file a reply to patent owner’s preliminary response to address patent owner’s argument that an asserted reference could not be used to challenge the patent under 35 U.S.C. § 103(c).  Petitioner argued that patent owner’s evidence is insufficient to prove ownership of a priority application of the reference under Australian patent law, and that the Board would benefit from briefing on the Australian patent laws pertaining to the application for and ownership of patents.  Under 37 C.F.R. § 42.62(d), the Board may, in determining an issue of foreign law, consider any relevant material or source, including testimony, whether or not submitted by a party or admissible under the Federal Rules of Evidence.  The Board agreed with petitioner that it would benefit from briefing by the parties on ownership of the priority application under Australian law.  The Board permitted patent owner to file a sur-reply to petitioner’s reply to the preliminary response.

Coalition for Affordable Drugs VI, LLC v. Celgene Corp., IPR2015-01092, Paper 59 (PTAB June 24, 2016) The Board authorized patent owner to file a sur-reply to the petitioner reply to address three references that were discussed in the petitioner reply.  Patent owner alleged that petitioner had not previously relied on the three references.  The Board indicated that patent owner’s sur-reply was limited to addressing: (1) the alleged new issues raised in petitioner’s reply; and (2) antedating the references cited in petitioner’s reply. The Board authorized petitioner to file an opposition to patent owner’s sur-reply.

Realtime Data LLC v. Oracle Int’l Corp., IPR2016-00695, Paper 7 (PTAB June 24, 2016) The Board denied petitioner’s request to file a reply to patent owner’s preliminary response to address alleged inconsistencies in the testimony of patent owner’s declarant. Under the amendments to 37 C.F.R. § 42.108(c), petitioner may seek leave to file a reply to a preliminary response upon a showing of good cause. Petitioner’s sole showing is an allegation that the declarant’s prior statements are inconsistent with his declaration. Such a showing addresses the weight petitioner believes the Board should afford the declarant’s testimony, but does not justify permitting a reply at the pre-institution stage of the proceeding.  Section 42.108(c) makes clear that at the pre-institution stage, any genuine issues of material fact that may be created by [the declarant’s] testimony are viewed in the light most favorable to petitioner. Thus, any disputed issues of fact will still be resolved in petitioner’s favor even if the allegations of inconsistencies in the testimony are true.

Xactware Sols., Inc. v. Eagle View Techs., Inc., IPR2015-00582, Paper 14 (PTAB June 30, 2016) The Board denied authorization for petitioner to file a reply to patent owner’s preliminary response.  Petitioner alleged that the preliminary response contained misstatements of the facts, arguments made in the petition, and of the law relating to the public accessibility of prior art.  The Board determined that good cause did not exist to justify permitting petitioner to file a reply.  The Board indicated that “[g]ood cause may exist in certain situations such as where new evidence comes to light after the filing of a petition or a legal argument of first impression is made by the Patent Owner.”  The Board indicated that it was not required to allow petitioner to identify new citations or bolster arguments in the petition.   The Board stated that identifying and evaluating statements or misstatements of the facts and law are well within the Board’s purview.  “It may always be the case that a Petitioner is unhappy with how Patent Owner characterizes the facts and law presented in the Petition. Our rules, however, provide for a Petitioner Reply only when good cause exists.”

Seabury N. Am., Inc. v. Lincoln Global, Inc., IPR2016-00749 (PTAB July 21, 2016). The Board denied authorization for petitioner to file a reply to patent owner’s preliminary response to address arguments concerning whether petitioner has sufficiently shown that two asserted references qualify as printed publications.  Petitioner argued that it could not have reasonably anticipated that patent owner would challenge the printed publication status of the references because they were discussed during the prosecution history of the challenged patent.  The Board determined that petitioner had not shown the required “good cause” to permit a reply.  At the institution stage, petitioner has the burden to show a reasonable likelihood that it would prevail in its challenges.  35 U.S.C. § 314(a).  Petitioner must make a threshold showing that the alleged prior art in its challenges are patents or printed publications.

Semiconductor Components Indus., LLC d/b/a On Semiconductor v. Power Integrations, Inc., IPR2016-00809, Paper 8 (PTAB July 29, 2016) The Board denied authorization for petitioner to file a reply to patent owner’s preliminary response.  Petitioner sought to address the relevance of a non-precedential Board decision that contradicted patent owner’s argument concerning whether petitioner was time-barred based on its acquisition of a third party that was previously served with a complaint for infringement.  The Board indicated that it was aware of the other Board decision and that it would address the parties’ positions on the issue in the institution decision.  Petitioner also sought to address patent owner’s claim construction that petitioner characterized as a “surprise” because it was inconsistent with the claim construction agreed to by patent owner in the related litigation.  The Board determined that it did not perceive “good cause” to address the claim construction.  The Board was aware of the parties’ positions and would address them in the institution decision.

The Clorox Co. v. Auto-Kaps, LLC, IPR2016-00821, Paper 7 (PTAB Aug. 9, 2016) The Board denied authorization for petitioner to file a reply to the declaration testimony submitted with patent owner’s preliminary response.  Petitioner argued that petitioner’s expert proposed an inappropriate claim construction for several terms of the patent by importing narrowing language without explanation as to where the constructions were supported.  The Board indicated that petitioner did not show good cause to justify authorization of a reply.  The Board assigns appropriate weight to expert testimony in accordance with 37 C.F.R. § 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.”).

Smith & Nephew, Inc. v. Arthrex, Inc., IPR2016-00917, Paper 9 (Aug. 4, 2016).  The Board authorized petitioner to file a reply to patent owner’s preliminary response to address patent owner’s argument that the Board should not institute review and enter adverse judgment against patent owner in view of patent owner’s disclaimer of all challenged claims.  Patent owner cited a prior Board decision and 37 C.F.R. 42.107 (“No inter partes review shall be instituted based on disclaimed claims.”) in support of its argument.  Petitioner argued that entering adverse judgment rather than denying institution would clarify the estoppel effect of the disposition under 37 C.F.R. § 42.73(d)(3).  The Board authorized petitioner to file a reply and for patent owner to file a sur-reply to aid in the Board’s analysis.

Instradent USA, Inc. v. Nobel Biocare Servs. AG, IPR2015-01786, Paper 57 (PTAB Aug. 16, 2016) The Board authorized patent owner to file a sur-reply to respond to alleged new arguments and evidence presented in petitioner’s reply regarding the public accessibility of an asserted reference, and and authorized both parties to file a two-page paper addressing whether an alleged new ground of anticipation and motivations/rationales to combine the prior art, and alleged new evidence to contradict patent owner’s secondary considerations evidence of copying are improper under 37 C.F.R. § 42.233(b).  The Board rejected patent owner’s request to file a motion to strike the alleged new arguments and evidence, noting that, as recognized by the Federal Circuit in Genzyme Therapeutic Prods., the introduction of new evidence in the course of an IPR trial is to be expected, and as long as the opposing party is given notice of the evidence and an opportunity to respond to it, the introduction of such evidence is permissible.  When issuing the final written decision, the Board will determine whether any of the alleged new arguments and evidence are improper under 37 C.F.R. § 42.233(b).

Dept. of Justice v. Discovery Patents, LLC, IPR2016-01035, Paper 8 (PTAB Sept. 9, 2016) The Board authorized petitioner to file a reply to patent owner’s preliminary response to address patent owner’s arguments that petitioner did not identify all real parties-in-interest in the petition.  Patent owner argued that petitioner should have identified eight companies, each of which allegedly had a contract with the U.S. government that includes an indemnification clause. Petitioner explained that it seeks the opportunity to file a reply to address why a request to notice third parties in an action under 28 U.S.C. § 1498, such as the action before the Court of Federal Claims, does not support patent owner’s argument regarding identification of the real parties-in-interest.

 

Termination of Proceeding

The parties may agree to settle a proceeding.  The Board, however, is not a party to the settlement and has the discretion whether to terminate the proceeding or continue review of the challenged patent.  37 C.F.R. § 42.47.

Blackberry Corp. v. Mobilemedia Ideas LLC, IPR2013-00036, Paper 64 (PTAB Jan. 21, 2014) Petitioner and patent owner filed a joint motion to terminate the proceeding after the oral hearing was held.  The Board terminated the proceeding with respect to petitioner, but not with respect to patent owner.  Applying 37 C.F.R. § 42.74(a), the Board held that, while the parties may have settled their issues with respect to the involved patent, the Board is not a party to the settlement and may determine independently any question of patentability.  The Board determined that it would proceed to a final written decision in view of the advanced stage of the proceeding.

Blackberry Corp. v. Mobilemedia Ideas LLC, IPR2013-00036, Paper 64 (PTAB Jan. 21, 2014) Petitioner and patent owner filed a joint motion to terminate the proceeding approximately seven months after institution of the IPR.  The Board terminated the proceeding with respect to petitioner, but not with respect to patent owner.  Applying 37 C.F.R. § 42.74(a), the Board held that, while the parties may have settled their issues with respect to the involved patent, the Board is not a party to the settlement and may determine independently any question of patentability.  The Board ultimately issued a final written decision finding the challenged claims unpatentable and denying patent owner’s motion to amend.

Apple Inc. v. Smartflash LLC, CBM2015-00016, Paper 56 (PTAB Mar. 29, 2016).  In a previous CBM proceeding, the Board issued a final written decision determining that claim 1 is unpatentable under 35 U.S.C. § 103.  The Federal Circuit affirmed the unpatentability of claim 1.  In the present CBM proceeding, petitioner challenged claim 1 under 35 U.S.C. § 101.  The Board determined that termination of review of claim 1 was appropriate in the present CBM proceeding because the claim had been finally cancelled, and any decision the Board might reach in the present proceeding would be moot and purely advisory.

Time Bar

An IPR proceeding or PGR proceeding may not be instituted if the petition requesting the proceeding is filed more than one year after the date on which the petitioner, the petitioner’s real party in interest, or the privy of the petitioner is served with a complaint alleging infringement of the patent. 35 U.S.C. § 315(b) (IPR proceedings) or 35 U.S.C. 325(b) (PGR proceedings). The one-year time bar does not apply to a request for joinder under 35 U.S.C. § 315(c) (IPR proceedings) or 35 U.S.C. § 325(c) (PGR proceedings), or to CBM proceedings.

Macauto U.S.A. v. BOS GmbH & KG, IPR2012-00004, Paper No. 18 (PTAB Jan. 24, 2013). The Board held that a complaint for infringement that is dismissed without prejudice does not amount to service of “a complaint alleging infringement of the patent” under 35 U.S.C. § 315(b). The dismissal of an action without prejudice leaves the parties as though the action had never been brought.  Therefore, the dismissal of an action without prejudice nullifies the effect of service of the complaint.

Motorola Mobility v. Arnouse, IPR2013-00010, Paper 20 (PTAB Jan. 30, 2013). 35 U.S.C. § 315(b) prevents institution of review if the petition is filed more than one year after the date on which the petitioner, real party-in-interest, or privy of the petitioner is “served with a complaint alleging infringement of the patent.”  The Board held that the term “served” in § 315(b) requires that the petitioner be served “with a summons” and named “officially a defendant in a law suit.”

Universal Remote Control Inc. v. Universal Elecs. Inc., IPR2013-00168, Paper No. 9 (Aug. 26, 2013). Petitioner was first served with a complaint for infringement of the challenged patent in 2001. The first complaint was dismissed with prejudice in 2002. Petitioner was served with a second complaint in 2012. The Board denied the petition as being time-barred under § 315(b) on the basis of the first complaint. The Board held that the one-year window of § 315(b) does not restart for a petitioner upon service of a subsequent complaint if the earlier complaint is dismissed with prejudice. Dismissing a claim with prejudice does not leave the parties as though the action had never been filed.

St. Jude Med., Cardiology Division, Inc. v. Volcano Corp., IPR2013-00258, Paper 29 (PTAB Oct. 16, 2013). The Board held that a counterclaim for infringement in a federal district court is “a complaint alleging infringement of the patent” within the meaning of 35 U.S.C. § 315(b).

Oracle Corp. v. Click-to-Call Techs. LP, IPR2013-00312, Paper 26 (PTAB Oct. 30, 2013) (precedential).  The Board held that a complaint for infringement that was voluntarily dismissed without prejudice is not a “complaint alleging infringement of the patent” within the meaning of 35 U.S.C. § 315(b), because the dismissal of an action without prejudice leaves the parties as though the action had never been brought.  The dismissal of the complaint nullified the effect of service of the complaint, and as a consequence, petitioner was not time-barred.

Amkor Tech., Inc. v. Tessera, Inc., IPR2013-00242, Paper 98 (PTAB Jan. 31, 2014) The Board held that an allegation of infringement in an arbitration proceeding does not trigger the one-year time period of 35 U.S.C. § 315(b).  Within the context of § 315(b), the phrase “served with a complaint alleging infringement of the patent” means a complaint in a civil action for patent infringement brought under 35 U.S.C. § 271 or § 281, not an arbitration proceeding. What matters is that the complaint pleads a cause of action for patent infringement and is served lawfully on the accused infringer in a civil action.

The Brinkman Corp. v. A&J Manufacturing, LLC, IPR2015-00056, Paper 10 (PTAB Mar. 23, 2015) The Board held that the one-year time bar of 35 U.S.C. § 315(b) does not begin to run when the patent owner mails a complaint. The one-year period began when the petitioner waived service of the complaint.  Service of an ITC complaint does not trigger the time bar provisions of § 315(b).

Johnson Health Tech. Co. v. Icon Health & Fitness, Inc., IPR2014-01242, Paper 16 (PTAB Feb. 11, 2015).  The Board indicated that the one-year statutory bar of § 315(b) “helps to ensure that inter partes review provides a quick and cost effective alternative to litigation, and is not sued as a tool for harassment or litigation gamesmanship” (citing H.R. Rep. No. 01242, as reprinted in 2011 U.S.C.C.A.N. at 78).

LG Electronics, Inc. v. Straight Path IP Group, Inc., IPR2015-00196, Paper 20 (PTAB May 15, 2015). The Board held that the time bar of 35 U.S.C. § 315(b) only applies to service of a complaint in a civil action brought in federal district court, and not to administrative proceedings such as an ITC investigation.

LG Electronics, Inc. v. Mondis Technology Ltd., IPR2015-00937, Paper 8 (PTAB Sept. 17, 2015) (precedential). Petitioner was served with a first complaint in 2008 and a second complaint in 2014 relating to the challenged patent. The 2008 complaint was dismissed with both prejudice and without prejudice. The Board rejected petitioner’s argument that the time bar of 35 U.S.C. § 315(b) should be measured from the second complaint. The Board held that since the 2008 complaint was dismissed with both prejudice and without prejudice, the dismissal of the earlier complaint did not leave both parties as though the action had never been brought.

ZTE Corp. v. Adaptix, Inc., IPR2015-01184, Paper 12 (PTAB Oct. 12, 2015)The Board held that a petition filed more than one year after service of a complaint is time-barred under § 315(b) if the motion for joinder filed with the petition is denied.  The mere accompaniment of a request for joinder with a petition does not nullify the § 315(b) time bar.

Micron Tech. Inc. v. Mass. Institute of Tech., IPR2015-01087, Paper 12 (PTAB Nov. 5, 2015). The Board held that a complaint served to initiate a proceeding in a foreign country is not a “complaint alleging infringement of the patent” within the meaning of section 35 U.S.C. § 315(b).  Therefore, foreign proceedings do not trigger the time bar of 35 U.S.C. § 315(b).

Arris Group, Inc. v. TQ Delta, LLC, IPR2016-00429, Paper 9 (PTAB June 30, 2016) The Board rejected patent owner’s argument that the petition was time-barred because petitioner and a soon-to-be-acquired third party were in privity on the filing date of the petition. The petition was filed two days before the merger between petitioner and the third party. The Board indicated that patent owner failed to demonstrate that petitioner had control over the third party’s lawsuit at the time of filing the petition, or that the third party had controlled, or had an opportunity to control, the IPR proceeding.

Waiver of Rules

Under 37 C.F.R. 42.5(b), the Board may waive or suspend requirements of parts 1, 41 and 42 of chapter 37 of the C.F.R.  Below are PTAB cases addressing requests by the parties to waive or suspend the applicable rules.

Arthrex, Inc. v. Bonutti Skeletal Innovations, LLC, IPR2013-00631, Paper 20 (PTAB Apr. 16, 2014) The Board authorized petitioner to correct its non-compliance with statutory and regulatory provisions, and maintain the original filing date of the petition.  Petitioner did not provide to the Board or patent owner copies of foreign patents relied upon in the petition, as required by 35 U.S.C. §§ 312(a)(3) and 312(a)(5).  Petitioner filed and served translations of the foreign patents, but did not file or serve the original foreign patents.  In the institution decision, the Board granted petitioner’s motion to correct the petition.  The Board was persuaded by petitioner’s counsel that the error was unintentional and inadvertent, and indicated that the error was clerical in nature and correctable under 37 CFR 42.104(c).  In a decision denying rehearing (paper 20), the Board stated “[w]e determine that the requirements for obtaining a filing date are defined by regulation, not statute, and that [petitioner] satisfied the requirements for obtaining a filing date on September 27, 2013, by identifying all patents upon which its challenges were based and supplying copies of those references, or a translation of the references, to [patent owner]… Contrary to [patent owner’s] contention, § 312 does not expressly address the standards by which the Board accords a filing date to a petition. Instead, 35 U.S.C. § 312 specifies the requirements that a petition must meet so that it ‘may be considered’ by the Board.”  The Board also indicated that petitioner’s failure to comply with the statutory requirements did not have a material effect on patent owner’s ability to file a preliminary response to the petition.

Apple, Inc. v. ContentGuard Holdings, Inc., IPR2015-00355, Paper 9 (PTAB June 26, 2015). The Board noted that it could have denied the petition because petitioner did not identify all related matters it was aware of, in violation of 37 C.F.R. § 42.8(b)(2), and thus also 35 U.S.C. § 312(a)(4).  The Board declined to deny institution for these grounds, instead denying the petition for reasons with respect to the prior art challenges.

Int’l Internet Techs. v. Sweepstakes Patent Co., LLC, CBM2015-00105, Paper 29 (PTAB Mar. 1, 2016) The Board denied petitioner’s motion to expunge patent owner’s motion to exclude evidence.  Petitioner argued that the motion to exclude was untimely because patent owner did not timely serve objections to the evidence prior to filing the motion to exclude.  Patent owner admitted that patent owner’s motion to exclude is non-compliant under 37 C.F.R. § 42.64(b) because of a docketing mistake and subsequent human error.  Pursuant to 37 C.F.R. § 42.5, the Board waived the service requirements under 37 C.F.R. § 42.64(b), finding that the interests of justice favored patent owner’s request.

Mexichem Amanco Holdings S.A. de C.V. v. Honeywell Int’l, Inc., IPR2015-01309, Paper 16 (PTAB Mar. 18, 2016).  The Board authorized patent owner to file a motion to terminate or, in the alternative, to reset the filing date of the petition after petitioner filed an updated mandatory notice identifying five new real parties-in-interest (RPIs).  A time-bar under 35 U.S.C. § 315(b) was not at issue in this proceeding.  The panel requested briefing on whether the RPI identification in the petition affects the filing date of the petition.  The Board required the parties to address the following two issues: (1) why, and under what authority, the Board can or should reset the filing date of the petition to the date on which the updated mandatory was filed, and what filing date should be given to the Decision to Institute; and (2) whether the Board has authority to waive its rules to permit the petitioner to update its RPI identification without resetting the filing date of the petition.

Plaid Techs., Inc. v. Yodlee, Inc., IPR2016-00275, Paper 15 (PTAB June 9, 2016).  The Board denied petitioner’s motion to change the filing date of the petition, which was filed shortly after the one-year statutory bar had passed.  Petitioner alleged that PRPS froze and it could not complete the filing of the petition.  Despite the reported issues with PRPS, the Board denied petitioner’s motion because petitioner did not serve the petition on patent owner in accordance with 37 C.F.R. § 42.106(a)(3) within the one-year period, and did not file a complete petition within the statutory period of 35 U.S.C. § 315(d).  The Board determined that petitioner failed to show good cause to justify the Board waiving the filing date requirements, because petitioner waited until the last day to file the petition and did not serve patent owner within the required time period even if petitioner had technical problems with PRPS.

Sony Corp. v. Raytheon Co., IPR2015-01201, Paper 47 (PTAB June 15, 2016)The Board authorized petitioner to increase the word count in its reply to 7,000 words. Petitioner informed the Board that a significant portion of patent owner’s response is dedicated to arguments regarding prior invention, which is not a subject petitioner would have been able to address in its petition. Petitioner sought 9,000 words. Patent owner agreed to a limited expansion of the word count, but indicated that increasing the word count to 9,000 was not warranted.