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.