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.