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.